EMAILING mark cancelled for being generic

France
In Syndicat National de la Communication Directe v Ludopia Interactive (March 24 2009), the Paris Court of First Instance has ordered the cancellation of the trademark EMAILING for services in Classes 35 and 38 of the Nice Classification on the grounds that the mark was generic at the time of filing.
 
French company Ludopia Interactive applied for the registration of the trademark EMAILING in 2005 and of the semi-figurative trademark EMAILING in 2007. Ludopiasubsequently acquired the trademark EMAILING FRANCE, which had been filed in 2006.
 
The Syndicat National de la Communication Directe (SNCD), which represents marketing professionals, frequently used the term 'emailing' in its communications. SNCD sought the cancellation of:
  • the trademark EMAILING on the grounds that it was generic at the time of filing; and
  • the trademark EMAILING FRANCE on the grounds that it was deceptive and had been filed fraudulently.
Having considered the numerous documents submitted by SNCD to demonstrate that the term 'emailing' was commonly used in relation to communication services in 2005, the Paris Court of First Instance ordered the cancellation of the mark EMAILING.
 
Ludopiahad also requested that Google Inc prevent third parties from reserving the term 'emailing' as a keyword in its AdWords system. SNCD argued that such measure constituted unfair competition, and the court agreed.
 
With regard to the trademark EMAILING FRANCE, the court found that the mere presence of the term 'France' would not mislead consumers into thinking that the services covered by the mark were official services offered by the French government. In addition, the court concluded that the trademark had not been filed fraudulently, as 'emailing France' was also used as a commercial name and in several domain names.
 
This decision is striking in several respects. First, it is difficult to understand why SNCD successfully obtained the cancellation of the EMAILING mark on the grounds that it was generic at the time of filing, but failed to obtain the cancellation of EMAILING FRANCE on the same grounds.
 
Moreover, the fact that the court ordered Ludopia to desist preventing other parties from reserving the term 'emailing' as a keyword was surprising. Arguably, Ludopiaacted only as a careful trademark owner.
 
Any party intending to apply for the registration of a mark with a weak distinctive character should thus bear this decision in mind.
 
Séverine Fitoussi and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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