France

[FR] The name “France” belongs to the French state

IRIS 2022-5:1/10

Amélie Blocman

Légipresse

An American company, France.com, which had registered the domain name “france.com” in 1994, discovered several years later that a Dutch company had registered various French and EU trademarks under the name “France.com” in 2009. It therefore sued the Dutch company on the grounds that it had registered the marks fraudulently, demanding that it transfer them to it and compensate it for the losses it had suffered. The French state then intervened in the proceedings and the court ruled that the marks should be declared void and the domain name transferred. The economic interest group Atout France also joined the proceedings. However, the EU and French trademarks had already been transferred to the company France.com, which had subsequently dropped its legal action. The French state therefore demanded that the registration of the French trademarks that now belonged to the company France.com be cancelled and that the latter be ordered to voluntarily give up the EU trademarks with the Office for Harmonization in the Internal Market (OHIM) - EUIPO since 2016.

The court of appeal annulled the France.com trademarks registered in France in 2009 and instructed the respondents to provide more evidence with regard to the EU marks. It held that the name “France” was part of the French state’s identity, similar to the family name of a real person. This right therefore pre-dated the registration of the French marks. The court rejected the French state’s claim that trademark laws had been violated, but upheld its request that the domain name france.com be transferred to it. The American company appealed to the Court of Cassation.

The Court of Cassation, France’s supreme court, rejected this appeal on 6 April 2022.

The Court of Cassation held that the court of appeal had correctly ruled that the French state’s prior right over the name “France” had been infringed. This name was part of the French state’s identity, since it referred to the national territory in its economic, geographical, historical, political and cultural identity, over which it held a prior right within the meaning of Article L. 711-4 of the Code de la propriété intellectuelle (Intellectual Property Code). The appeal court added that the suffix “.com”, which was part of an Internet domain name, was unlikely to alter the public’s perception of the mark. The public would therefore assume that the products and services made available by France.com were provided by the French state, creating a risk of confusion.

The Court of Cassation also agreed with the court of appeal’s view that the domain name “france.com” used by the company France.com infringed the French state’s rights over its name, identity and sovereignty, and that the name “France”, which was part of its identity, had been damaged, as claimed by the French state with reference to Article 9 of the Code civil (Civil Code).

Finally, the judges considered that the court of appeal had been right to declare the sale of the domain name “france.com” by the American company illegal. The appellant could not claim that it held a “possession” in the sense of Article 1 of Protocol No. 1 to the European Convention on Human Rights, which protected the right to property.

They also pointed out that the registration of a domain name did not give its owner a property right within the meaning of Articles 544 and 545 of the Civil Code. The company could therefore not claim that such a right had been infringed.