Split of practice between the Community and French overall comparison?

The LIMONCHELLO decision of June 12, 2007 started amending the systematic and blindly applied prevalence of a word over a device element. It was upheld that an isolated element of a trademark comprising several elements could not be taken into account to rule a likelihood of confusion with another trademark unless the said element dominated the overall impression of the mark.


The QUICKY case (on which we worked) ruled on September 20, 2007 went into a new step of the changing process. The CJCE rejected the automatic domination of a word over a device part and pointed out that even a negligible device or word Trademark similarity element could perfectly dominate the overall impression of a sign. Things have not yet changed in France where the word prevalence remains largely applied.

A decision of June 8, 2007, of the Paris Court of First Instance is self-speaking with regard to trademark infringement of the international trademark associating the word PUMA placed under the representation of a nimble big cat. The attacked French trademark consisted in the representation of a nimble big cat with the denomination DUOLYNX PARIS appearing in the lower part of the sign. The Judges regarded the signs as dissimilar because of their respective word parts PUMA and DUOLYNX PARIS.

They also considered the representations of the animals as liable to be perfectly differentiated thanks to the respective meaning of the words PUMA and LYNX (appearing inside of DUOLYNX). The Community evolution will certainly be consolidated in 2008 and will have some effects on the French practice. For the time being, the duality between the newly changing Community approach and the not yet modified French approach is not neutral, strategically speaking, when defending a trademark.

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