Cour de cassation, Commercial Division, 31st March 2015, No. 13-21.300

• France

• Intellectual property

11-06-2015

In the case at hand, the company holding the French word trademark “Moulin Rouge” had granted a trademark license to the company, which is running a cabaret by that name. The latter company is the exclusive licensee. The trademark was registered in 1973 and has been renewed since then. It has been registered to cover products in classes 16 and 21 (stationery, office requisites, and glassware).

The holder of the rights in the trademark, and the licensee, noted that another company was offering for sale pencil cases, mouse pads, and coasters, on which the trademark “Moulin Rouge” was reproduced and accompanied with the drawing of a red mill or a picture of the façade of the Moulin Rouge. The trademark holder and the licensee therefore took legal action against such company on the grounds of trademark infringement, unfair competition, and acts of parasitism.

However, the claimants failed to succeed in their claims.

An appeal was lodged with the Cour de Cassation, being the highest court in France. The Cour de Cassation dismissed the claimants’ claims, and considered that the name “Moulin Rouge” had been used only for the purposes of describing a tourist attraction like other monuments that have become symbols of Paris, without this affecting the guarantee of origin of the products, on which the trademark is affixed. Although such name is used in the course of business, such use shall not be regarded as a use as a trademark, since it lacks the distinctive role that is granted to a trademark. Therefore, to the Court, the use of a name “Moulin Rouge” is not to be described as an infringement act.

So, with this ruling, the Cour de Cassation agrees with the lower courts, who had concluded there was no trademark infringement act.

The Cour de Cassation also agrees with the lower courts in relation to those claims, which are based on acts of parasitism and on unfair competition.

In order to conclude that the defendant in the appeal proceedings did not follow, and interfere in, the licensee’s wake (the licensee being the company running the cabaret by the same name) and that the defendant in the appeal proceedings did not try to take advantage of the licensee’s fame (this corresponds to parasitism), and also in order to conclude that there can be no confusion between the respective activities run by the parties to the dispute (this would correspond to unfair competition), the court of appeal noted that the defendant reproduces the main monuments and tourist attractions of Paris on its products, identifying such monuments and attractions by their name and, in relation to the Moulin Rouge, without referring to the commercial activities run by that establishment.