WIPO expert refuses to recognise well-known status of ELLE mark

The WIPO Arbitration and Mediation Center – as the dispute resolution authority for '.ch' domain names – has held that the domain name 'elle-agency.ch' did not infringe the trademark ELLE (Case DCH2012-0023). The WIPO expert found that it had not been proven that ELLE was a famous trademark, and was not convinced by the claimant’s arguments that the domain name 'elle-agency.ch' constituted a clear infringement of its trademark rights.

In June 2012 Full Access Sàrl registered the domain name 'elle-agency.ch'. Shortly thereafter, the owner of the trademark ELLE, Hachette Filipacchi Presse, filed a request with the WIPO Arbitration and Mediation Center for verification in connection with the disputed domain name. The expert assessed the rights of the claimant and the alleged infringement and, in doing so, focused on two issues:

• What are the requirements for a trademark to be recognised as famous and does ELLE fulfil these requirements?
• Does the use of the disputed domain name constitute an infringement of the claimant’s right under Swiss law and, in particular, are the goods and services for which trademark protection is claimed similar or identical to those offered by the respondent on its website?

Referring to a decision of the Swiss Federal Supreme Court, the expert examined whether ELLE could be regarded as a famous trademark since the Swiss Federal Supreme Court has decided that (the registration of) a misleading domain name alone may be sufficient to establish the violation of a famous trademark (Decision 4C.31/2004 of November 8 2004, RIESEN).

The term 'famous trademark' is neither defined in the Swiss Trademark Act nor further specified in any other directive or guideline. The expert therefore referred to Swiss case law on this issue and examined the relevant criteria. According to Swiss case law, the following factors must be considered when assessing a potentially famous trademark:

• the trademark’s high level of recognition among the Swiss public (at least 50%);
• its strength in advertising;
• its important financial value in different fields; and
• its distinctiveness and uniqueness.

Although it was established that Elle is a widely-known fashion magazine which sells over six million copies per issue in over 90 countries, the expert refused to recognise its status as a famous trademark in Switzerland. The alleged circulation of approximately 300,000 copies per year in Switzerland did not convince him that more than 50% of the Swiss population knew the trademark. Moreover, the expert held that the ELLE mark was almost exclusively used in the field of publications and that 'elle' is the French pronoun for 'she'. Therefore, the importance of the trademark ELLE in different fields, as well as its distinctiveness and uniqueness, were rather low. Other figures, such as the alleged advertising expenses of almost €35 million worldwide in 2009, were not taken into account since the situation outside of Switzerland is not relevant when establishing the percentage of recognition of a trademark in a country, apart from rare exceptions.

It is interesting to note that, in a recent decision (Decision 4A_128/2012, August 7 2012, VOGUE), the Swiss Federal Supreme Court considered that the trademark VOGUE for a fashion magazine was famous, especially as the circulation of Elle magazine (6.6 million copies per month worldwide) is higher than the circulation of Vogue (1.2 million copies per month worldwide).

The WIPO decision shows the limited scope of the discussion on the merits in such cases. If a trademark owner seeks to allege that its trademark is famous or well known, the domain name dispute resolution mechanism is not the appropriate process. However, an exception should be made for widely-known trademarks, whose famous character would be considered to be known by the court or panel.

In contrast to famous trademarks, the exclusive right conferred by a 'normal' trademark is limited to the goods/services for which it has been registered. Hence, only use of the disputed domain name in connection with a similar or identical category of goods/services constitutes a clear infringement of the right in a distinctive sign. In the case at issue, the claimant itself acknowledged that the goods and services offered on 'elle-agency.ch' were completely different from its own services. Further, the expert noted that the customers targeted by the parties are of a different gender. As a result, the trademark owner's request was dismissed, as there was no clear infringement of an IP right.

Markus Frick and Kim Leuch, Walder Wyss Ltd, Zurich