Oceanet : a mark cancelled by an ealier use on Internet
17.11.1999
For the first time in France, a Court of First Instance has canceled a registered mark because it was anteriorized by a web site.
The Facts :The activity domain of the plaintiff, the Company MICROCAZ, is the computer material selling and the internet and web services.The defendants, FRENCH SOCIETY OF DISTRIBUTION (SFDI) and the Company OCEANET are providers and are located in Nantes.July 3, 1996 : after having checked within the French Register of Trade that the sign "OCEANET" was available, SFDI reserves the domain name OCEANET.com and opens an internet line.Mid July : the domain name OCEANET.com cannot be registered to the INTERNIC because an American Company has already filed it on July 10, 1996. The site OCEANET is however accessible, without domain name, simply with the I.P. address. The search engines submission is already done and it is possible to find the site OCEANET by the search engines.July 31, 1996 : MICROCAZ registers the sign OCEANET for a second establishment.September 11, 1996 : SFDI creates a subsidiary company OCEANET in order to file the domain name OCEANET.fr .September 17, 1996 : SFDI files the mark OCEANET.MICROCAZ having discovered the existence of the web site OCEANET sues the Company OCEANET for infringement of its mark.The decision :The TGI of Mans recognized the possibility of "a risk of confusion in the mind of the average internet's user who, knowing the existence of one of the two companies, could be taken by a search engine to the web site of the other one".The TGI has also declared that SFDI "used the denomination OCEANET as a domain name in the middle of July, i.e. prior to the filing by the plaintiff of its complex mark including this denomination".It is here the recognition of the anteriority of a simple use of the sign against the filing of a mark.The French law, in its article L. 711-4 says that a sign may not be adopted as a mark if it infringes earlier rights.The deposit of a domain name has not yet been judged as giving a right to its titular. Should the simple use of a sign for naming a site be recognized as an anteriority with regard to the mark ? A decision in appeal would be interesting...Court of First Instance of Mans, June 29, 1999
