A domain name is an intangible asset which, if it is exploited, can be used against a subsequent trademark.
The Paris First Instance Court reiterated this principle in the 17 January 2014 (link only in French) judgment, saying that “a domain name can be included, although they are not expressly cited in the above mentioned Article L. 711-4 list, in the opposable prior articles against the person who filed the mark, however, it is essential that in addition to the formalities of registration or hosting, it has resulted in an effective exploitation of a website”.
In the present case, the domain name mazaldiamond.com is not exploited and therefore cannot oppose the MAZAL mark filed after the date of the domain name reservation.
This principle is consistent with the provisions of Article L. 711-4 of the French Intellectual Property Code that lists the prior rights which a sign must not infringe in order to be adopted as a mark. It also employs the term “including” implying that other prior rights can constitute justifiable prior articles.
Case-law has repeatedly recalled that, under this article, an exploited domain name could constitute an opposable prior article to a mark.
One of the first decisions, if not the first, to have recognized this principle, is a 29 June 1999 judgment of the Le Mans High Court, Microcaz c/ Oceanet, concerning the oceanet.co.uk domain name. In this case, the court recognized that the domain name was previously exploited and therefore declared the subsequently registered mark null and void.
Case-Law then clarified the conditions under which a domain name can constitute an opposable prior article to a mark, namely that it is necessary to establish the right to the domain name prove prior use and demonstrate the likelihood of confusion.
In addition, it is now widely accepted that a previously exploited domain name cannot be opposed to a registered mark in Class 38 (for telecommunication services). In this case it is necessary to demonstrate that the activity presented on the website is identical or similar to the services designated by the mark.
Finally, it is essential that the domain name be distinctive in relation to the activity presented on the website in order to be opposed to a later mark designating identical or similar goods or services it’s activity.
In France, even when a domain name is previously exploited it is not possible to oppose a trademark application on the basis of an earlier domain name through the opposition procedure
However, at a European level, under Article 8 paragraph 4 of the Community trade mark Regulation, an opposition may be based on a previously exploited domain name.
In effect, according to this article, an opposition may be based on a sign used in the course of trade of more than local significance.
Certain OHIM decisions have already recognized that a previously exploited domain name could be considered as a sign used in the course of trade of more than local significance.
Furthermore, in order for a French mark to be validly opposed, it must be demonstrated that the domain name is exploited in France.
For this purpose, French and Community case-law has undergone certain changes. Nevertheless, French courts now tend to retain the destination principle. Thus, if it is demonstrated that the French public is affected by the offer proposed on the website, it should be considered that the domain name is exploited in France.
In view of the above, the domain name must not only be considered as a means of communication through the Internet but must also be regarded as an intangible asset, or even as an industrial property right, that it should not be overlooked in intellectual property defence strategies..
REGIMBEAU has a team specialising in domain name law at your disposal to perform an audit of your domain names and your marks and explore with you domain names which could be opposed to subsequent rights.
