According to the law of December 29, 1979, ” constitutes a sign any inscription, form, or image affixed to a building and relating to an activity which is carried out. (article L.581-3 of the french Environment Code).
The sign is the exterior sign that is used on the façade to individualize a point of sale.
The sign applies to an establishment/premises, but not to the business as a whole.
To make a parallel, we can consider that the domain name is the sign of a website in the digital world.
A company’s sign stands out:
- The corporate name, the name given to a company that allows it to be identified as a legal entity.
The sign identifies the business premises and not the business as a whole.
- The trade name, the name under which a commercial enterprise participates in business life and will be known to the public.
The sign is the extension of the trade name under which the activity is carried out and known to the public.
The sign may not mention the trade name and may be limited to a logo, a few letters, or on the contrary be a variation of the trade name.
If the company has called upon a third party to create its sign (which happens frequently, especially for the creation of a logo), it must ensure that this third party transfers the rights it holds on its creation via a copyright transfer contract.
Indeed, the choice of the sign is free, provided that it is lawful and does not interfere with the rights of third parties. Therefore, to be sure, it is strongly recommended to perform a prior art search before exploiting it, just like the prior art search before registering a trademark.
The sign is not a title of intellectual property within the meaning of the provisions of the french Intellectual Property Code, under these conditions if a third party were to use an identical or similar sign without its authorization, the owner of the sign could not act in infringement (action open only to holders of intellectual property rights).
In case of infringement of a sign, if the conditions provided for in article L.711-3 of the french Intellectual Property Code are met for it to constitute a prior right opposable to a trademark:
“I.- A trademark that infringes prior rights effective in France, in particular: (…) shall not be validly registered and, if registered, may be declared invalid
4° A trade name, sign or domain name, which is not only local in scope, if there is a risk of confusion in the public mind ; (…)”.
The scope of protection of the sign, which is a sign of use, is therefore conditional on the fact that it is known throughout the national territory (excluding signs operating solely in a specific area or location) and there is a likelihood of confusion in the mind of the public (in particular with regard to the product(s) and/or service(s ) covered by the earlier filed or registered trademark).
These provisions thus make it possible to prevent a sign with a local scope from impeding the use of the same sign by a third party.
Case law focus
The “Cour de cassation” considered that there was a risk of confusion between the Maxim’s sign for a Parisian restaurant and the Nice cabaret Maxim’s, even though the two establishments are not located in the same city, in particular on the grounds :
“In the light of the findings of the judgment under appeal, referred to in the grounds for annulment, and from which it resulted that the two establishments had part of their clientele in common, the Court of Appeal made a sovereign assessment, without distorting the legal terms of the dispute, of the risk of confusion between the two companies; […]
Finally, the Court of Appeals, contrary to what is maintained in the appeal, considers the confusion that occurred between the two establishments in the minds of certain customers to be established;
That it also notes that the company “maxim’s ltd” has suffered “moral damage” resulting from the damage caused to its reputation by tarnishing in the minds of certain foreign tourists the brilliance of the name under which the Parisian restaurant has gained its international reputation; […]” (Cass. com., November 2, 1966, n°411).
The Douai Court of Appeal was able to point out that the principle that ” the sign is used to locate an establishment, its protection is justified only in the field where this location is significant “to justify the risk of confusion between the Le Quotidien and Au Quotidien signs, to designate two bakery-pastry shops located 1.7 km apart (Douai Court of Appeal, July 12, 2018, No. 17-04.018).
The Bouchara firm assists you in particular in :
- The conduct of prior art searches to detect prior rights that may hinder the exploitation of your brand (trademarks, domain names, company names , etc.);
- The protection and defense of your various assets and in particular your identification signs (registration of your intellectual property titles before the Offices such as the INPI for France, the EUIPO for the European Union, infringement action etc…).