Posted on Jan 27, 2015 in Intellectual Property by Caroline Pigott
IP Specialist warns businesses to beware of community trade mark where the translation of a mark might encroach upon a third party's registration.
You will probably have seen in a recent trade mark article on "Je Suis Charlie". I'd like to stay with the French trade mark landscape pour un moment plus, if I may?
A case which on first glance seems quite obvious has had to go all the way to the European Court of justice to be resolved. Euronews, the rolling multilingual news channel has, since 2010, been trying to register the trade mark "NEWS+" much to the aggravation of French cable TV channel, Canal+. Canal+ has a registered mark in France for "ACTU+". Playing a literal game of "compare and contrast", the two marks have very little in common. However, when we consider that in French, a word for "news" is "actualité", often shortened to "actu", you can see why Canal+ might be aggrieved.
The European Court has ultimately determined that whilst the two marks are conceptually similar, the visual impact of each mark is distinct and therefore the likelihood of confusion is small. The mark "NEWS+" should therefore proceed to registration.
This case highlights the dangers of applying for a community trade mark where the translation of a mark might encroach upon a third party's registration. In reality, this litigation will have cost both sides an inordinate sum of money and not all parties will have the funds, time or inclination to bankroll a trade mark application to the highest court in Europe.
Caroline Pigott is a specialist Intellectual Property, Technology and Media Solicitor. We are always delighted to talk without obligation about whether we might meet your needs. Contact Caroline on the details below.