February 15 2010
On October 16 2009 the Paris Tribunal of First Instance issued a ruling involving the domain names of two rival companies which reaffirmed the strength of domain names as protectable, distinctive signs and their potential priority over trademarks.
Mistergooddeal SA, operator of the website www.mistergooddeal.com, specialized in clearance sales of appliances, utilities, furniture and other goods. The company started operations in the early 2000s. It registered the domain name 'mistergooddeal.com' on January 25 2000 and applied for French and EU trademarks in the term MISTER GOOD DEAL on the same date. The trademarks were applied for in Classes 35 and 38 (mainly to cover sales, promotions and commercial activities on the Internet).
In 2004 Mistergooddeal became aware of a trademark application filed by MGD for the term MR GOOD DEAL, covering Classes 25, 28, 35 and 38. Mistergooddeal filed a partial opposition against MGD's trademark application, requesting that the trademark cover products in Classes 25 and 28 only (eg, clothing, shoes, belts, socks, beach shoes, ski shoes, sports shoes and underwear).
The National Institute for Industrial Property accepted Mistergooddeal's reasoning and rejected MGD's application for MR GOOD DEAL in Classes 35 and 38. MGD's trademark was registered in Classes 25 and 28.
In January 2008 MGD sent a cease and desist letter to Mistergooddeal, claiming that the latter was infringing the MR GOOD DEAL trademark, based on the fact that sportswear and sports shoes were available to purchase on Mistergooddeal's website. However, the products in question were sold not under the trademark MISTER GOOD DEAL, but under the trademarks of their respective manufacturers (including Nike and Timberland).
Mistergooddeal noted that MGD had sold sportswear equipment under various trademarks at www.mr-good-deal.fr since 2006, but ceased doing so on February 20 2008. Mistergooddeal filed an action against MGD for trademark infringement and claimed damages of €100,000 and €10,000 in legal fees.
Mistergooddeal claimed that MGD's MR GOOD DEAL trademark was used solely for the purpose of running an online shop and should therefore be cancelled. In addition, Mistergooddeal claimed that its MISTER GOOD DEAL trademark was well regarded and well known at the time of registration of MGD's trademark.
The tribunal denied that Mistergooddeal's MISTER GOOD DEAL trademark was well known. The judges found that insufficient information had been provided to show that the trademark had earned such a status. Consequently, MGD's MR GOOD DEAL trademark remained valid for other classes.
On the issue of trademark infringement, the tribunal noted that MGD was entitled to sell goods under its MR GOOD DEAL trademark on the Internet. No evidence was presented to show that MGD had attempted to develop an online shop to sell goods other than those covered by its trademark registration.
Nevertheless, MGD was found liable for trademark infringement for its use of the domain name 'mr-good-deal.fr'. The tribunal deemed this to be an infringement of earlier trademark rights held by Mistergooddeal. The result was an award of €10,000 in damages to Mistergooddeal. The tribunal found that there was a visual and phonetic similarity between the domain name 'mr-good-deal.fr' and the trademark MISTER GOOD DEAL, which was likely to lead to confusion. The tribunal found that MGD need not have chosen such a domain name.
The tribunal also dismissed the counterclaims filed by MGD. MGD claimed infringement of its trademark, registered in 2004, but this was dismissed by the tribunal, as Mistergooddeal's trademark had been registered in 2000 and the goods sold on the website www.mistergooddeal.com were sold under other brand names. The domain name 'mistergooddeal.com' was registered in 2000 and the tribunal noted that this gave Mistergooddeal priority over MGD's trademark, registered in 2004.
The tribunal also found that MGD's claim that it registered the domain name 'mr-good-deal.fr' in 1999, before registration of Mistergooddeal's trademark in 2000, was irrelevant as the domain name was not used until 2006, by which time Mistergooddeal's trademark had been registered. MGD claimed that it had had a company name in the term Mister Good Deal since 1998, but the tribunal noted that records showed this not to be the case.
For further information on this topic please contact David Taylor, Jane Seager or Lionel De Souza at Lovells by telephone (+33 1 53 67 47 47), fax (+33 1 53 67 47 48) or email (firstname.lastname@example.org, email@example.com or firstname.lastname@example.org).
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