Paris Court of Appeal – October 17, 2008
On October 17, 2008, the Paris Court of Appeal made a disputable application, in comparing the signs ILLICO (meaning “at once”) and POSTILLICO, both filed under service classes 35 and 42.
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The Court stated that the term POST will not be understood as a preposition but as a reference to services offered by LA POSTE, the expression ILLICO being used to qualify these services. Consequently, the consumer should not normally consider that the services have the same origin.
This position – which we have already criticized – deprives trademark owners of any defense against well-known companies and comes in opposition to Community case law (LIFE / THOMSON LIFE – ECJ 10. 06. 2005).
The Court even recognized in its disposition, and in the same sentence, that “the term ILLICO is a distinctive element which can be found identically in the contested sign (…), being emphasized also that the term ILLICO – which is a common word – is frequently used and is hardly distinctive”.
This decision can be compared to such recent decisions as NIKE FREE/ FREE (Paris CA January 16, 2008), GAN SECURITE FAMILLE / SECURITE FAMILLE (Paris CA September 20, 2002), which we consider wrongly admitted that adding a company name just before a registered trademark is sufficient to avoid confusion.
A decision to be forgotten at once!