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Justice - Photo © Yanchenko - Fotolia

(LUXEMBOURG) - The French government succeeded Tuesday in its attempt to have the European Court of Justice outlaw an attempt by a French businessman to register the sign '' as an EU trademark.

The case concerned a Mr Jean-Noël Frydman, who subsequently assigned his rights to the American company, who in 2014 applied to the European Union Intellectual Property Office (EUIPO) for registration of the following figurative sign as an EU trade mark in respect of advertising services, services relating to travel and online publications: logo

France then filed a notice of opposition based on the following EU trade mark, which it had registered with EUIPO in 2010:

France Eiffel logo

EUIPO upheld France's opposition, finding found that the signs at issue were 'highly similar overall' and covered identical or similar services, and that a likelihood of confusion could not be ruled out., not satisfied with EUIPO's decision, sought the annulment of that decision before the General Court.

However, the Court in its judgment has dismissed the action, confirming that that company's sign cannot be registered as an EU trademark.

The Court reviewed EUIPO's analysis of the comparison of the signs at issue and whether there was a likelihood of confusion. As regards the visual comparison of the signs, the Court disagreed with the EUIPO and took the view that, given the differences between their features and the general way in which they are set out visually, the signs at issue, considered as a whole, were only 'slightly visually similar'.

From a phonetic standpoint, the Court confirmed EUIPO's assessment that the signs at issue are almost identical, because it can be assumed that many consumers will refer to the sign of by the word 'France' alone, the abbreviation '.com' being perceived as referring to a website.

Finally, the Court found, as did EUIPO, that the signs at issue were conceptually similar, as they convey the same concept (namely France, the Eiffel tower and the colours of the French flag), the presence of the word element '.com' in the sign of having no bearing on whether the signs are conceptually the same.

In the light of the fact that the signs at issue cover identical or similar services and have a particularly high degree of phonetic and conceptual similarity, the Court has found that 'there is a likelihood of confusion'. It follows that, as EUIPO decided, France is entitled to oppose registration of the sign

Judgment in Case T-71/17 -, Inc. v EUIPO

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