Wednesday, 22 August 2007

The City of Paris stops the use of its name as a trademark and domain name

High Court of First Instance of Paris (3rd Chamber, 2nd Section), 6 July 2007

The City of Paris brought an action before the High Court of First Instance of Paris against an association that registered under the name ‘Paris-Sans Fil’ (‘Wireless Paris’). The association had registered the trademark ‘Paris-Sans Fil’ in the classes 35, 38, 41 and 42, and had reserved the domain names ‘’, ‘’, ‘’ and ‘’.

In application of Article L.711-4 of the French Intellectual Property Code, which provides that ‘Signs may not be adopted as marks where they infringe earlier rights, particularly […] the name, image or repute of a local authority’, the City of Paris requested the annulment of the trademark.

The High Court held that in such a case a local authority has to demonstrate that the use of a litigious sign entails a likelihood of confusion with its own activities or that the use is likely to cause prejudice. In the present case, the Court noted that the City of Paris did bring evidence that it has developed activities in the field of information technologies, in particular in the development of high bandwidth and Wi-Fi, and that it therefore demonstrated that the use of the trademark entailed a risk of confusion on the part of the public. Consequently, the Court annulled the trademark ‘Paris-Sans Fil’.

For the same reasons, the Court held that the use of the name ‘Paris-Sans Fil’ and the registration of the domain names mentioned above, constitute a tort in the meaning of Article 1382 of the Civil Code, which provides that ‘Any act whatever of man, which causes damage to another, obliges the one by whose fault it occurred, to compensate it.’

The Court ordered the association to change its name and to carry out the cancellation of the domain names. The association was ordered to pay symbolic damages to the City –1 euro– but the Court authorized the publication of the judgment in three newspapers or magazines of the plaintiff’s choice, and at the defendant’s expense.

It is not the first time the City of Paris successfully brings a case to court to defend its rights to its name, image and repute, on the grounds of Article L.711-4 of the Intellectual Property Code (see our commentary of the judgement of the High Court of First Instance dated 14 March 2007 at