- Author: Executive Agency for Small and Medium-sized Enterprises
France victorious in ‘france.com’ dispute
The dispute started when the US travel services company “France.com” initiated a trademark action in France against a Dutch company that it claimed was infringing its French and EU FRANCE.COM marks. The French State intervened voluntarily, claiming that trademarks containing the term “France” are contrary to public policy.
The Paris Court of Appeal initially cancelled the contested French trademark registrations and ordered the transfer of the domain name “france.com” to the French State. The EUIPO Board of Appeal and General Court also found that there was a likelihood of confusion between FRANCE and FRANCE.COM due to a high degree of phonetic and conceptual similarity.
Following these decisions, the US travel agency subsequently sued the French Republic in federal court (in the US) for cybersquatting and trademark infringement. After a request to dismiss the case under the Foreign Sovereign Immunities Act was rejected because it “would be best raised after discovery has concluded”, the French state appealed. On appeal, the Fourth Circuit said that the US Supreme Court had deemed sovereign immunity a threshold question that should be addressed “as near to the outset of the case as is reasonably possible”.
The US Fourth Circuit finally decided that France is indeed immune from US trademark infringement claims based on the above-mentioned act.
Lego’s victory to secure its design
The General Court of the European Union struck down a 2019 decision by the European Union Intellectual Property Office (EUIPO) on Tuesday, ruling that the design of the LEGO building blocks can be protected by a design.
According to the General Court, the EUIPO wrongfully declared invalid a design of a brick of a LEGO toy building set. In doing so, the EUIPO failed to examine the relevance of the application of the exception relied on by LEGO and failed to take into consideration all the features of the appearance of the brick. Indeed, the EUIPO considered that the features were solely dictated by the technical function of the product: assembling with, and disassembling from, the rest of the bricks of the set. Following the provisions of the Regulation on Community Designs, the EUIPO, therefore, declared the design in question invalid.
The brick in question is one of the newest designs and was not registered for protection until 2010. The flat plastic plate has the width of three studs, yet these only run down the centre of the plate, with the surface to either side being smooth, thus the design is not limited to a technical function.
The above is what allowed LEGO to rely on the following exception, making the LEGO piece deserving of design protection: “the mechanical fittings of modular products may constitute an important element of the innovative characteristics of modular products and present a major marketing asset, and therefore should be eligible for protection”. Thus, a Community design subsists in a design serving the purpose of allowing the multiple assembly or connection of mutually interchangeable products within a modular system.
The case is T-515/19 Lego A/S v EUIPO and Delta Sport Handelskontor GmbH (https://curia.europa.eu/juris/documents.jsf?num=T-515/19).