By a decision of December 18, 2014, the 1st The Civil Chamber A of the Court of Appeal of Lyon gives a special place to the Facebook page of a merchant in a case of unfair competition opposing two actors of the online market of food spirulina – bacterial food used as a food supplement. The Court orders a company to pay the sum of 20 000,00 euros in compensation for commercial damage for having blocked the two Facebook pages of its competitor.
Mr.C. operates an informative website, www.spirulinedefrance.fr, and a commercial website, www.village-spiruline.fr, both dedicated to spirulina. In order to promote his activity, he created two Facebook pages “laspiruline” and “villagespiruline”.
It criticizes the company Spiruline Sans Frontière (SSF) for having registered the French trademark “Spiruline de France” (No. 3987515) on March 4, 2013 on the grounds that this tradebrand would be descriptive and the tradebrand Village Spiruline” (No. 3983496) on February 17, 2013 on the grounds that it was filed in fraud of its earlier rights on its domain name ” village-spiruline.fr ” reserved on September 11, 2011.
He also criticizes SSF for having initiated a Syreli procedure (allowing for the resolution of extrajudicial disputes proposed by AFNIC) against him which, although it failed because of Mr. C.’santeriority, led to the freezing of his domain names during the procedure.
And finally, and this is the main interest of this case, it accuses SSF of having asked Facebook, in April 2013, to block its “Village Spiruline” and “SpirulineFrance” pages on the basis of unduly acquired rights, i.e. a descriptive trademark and a fraudulently registered trademark, and thus claims to have suffered a prejudice for which it seeks compensation since one of these pages was blocked for nearly a year. SSF refused to withdraw its complaint, then belatedly notified Facebook of the trial decision, indicating that it was withdrawing its complaint, and the other Facebook page has still not been brought back online (for unknown reasons).
The Court confirms in all its provisions the judgment of the Lyon Court of First Instance of December 17, 2013, which had granted Mr. C.’s claims and increased the amount of compensation due to Mr. C. for his commercial loss.
- First, the Court confirms the descriptive character of the trademark “Spirulina from France” and declares the trademark invalid.
- Secondly, the Court recalls that the “In accordance with Article L. 711-4 of the Intellectual Property Code (now Article L.711-3 of the Intellectual Property Code), a domain name constitutes prior art that prohibits the subsequent registration of an identical sign to designate identical or similar goods or services, which infringes the rights attached to it.provided that it is actually being used. It is now well established that a person who owns and operates a domain name is entitled and justified in requesting the cancellation (or transfer in the case of fraudulent filing) of the registration of an identical trademark on the basis of this article. Since the transposition into French law of the “Trademark Package (Directive (EU) n°2015/2436 and Regulation (EU) n°2017/1001)”, it is also possible to invoke, as earlier rights, the domain names in the context of an opposition procedure against a trademark application, as provided for in Article L.712-4 of the Intellectual Property Code.
In this case, the Court concludes that SSF’s registration of the trademark “Village Spiruline” infringes on Mr. C’s prior rights to the domain name “village-spiruline.fr” and that this registration is fraudulent.
- Finally, and this is the major contribution of this decision, the Court focuses on the impact of a Facebook page on a merchant’s business activity. For the Court, Facebook is “a medium on which events move quickly and where, in particular, the disappearance of a page creates immediate damage” .
According to the Court, “the blocking of the Facebook pages has harmed Mr. C., since he has lost, for almost a year, the exposure he enjoyed until then” and “in these conditions, the positioning on Facebook is to be rebuilt and a turnover is lost.
While a Facebook page does not allow a product to be sold online, the Court establishes a direct link between the blocking of a Facebook page and the decrease in a merchant’s sales.
Court lends Facebook page blocking significant impact on online commerce: “From these observations, it follows that a turnover, and therefore a margin, were lost by the blocking of the Facebook pages and that it is certain that this circumstance had an impact on the deterioration, both of the ranking in the most used search engine in France , and of the actual traffic of the merchant site.
Mr. C. claimed in particular that the position of his site had dropped to 14th place on the Google search engine when the keyword “spirulina” was searched, whereas it was in 3.7th place before the deletion of his Facebook pages.
The Court concludes that “the result, as Mr. C. exposes it, is a loss of visibility and credibility, as well as an unfavorable signal for referencing and a loss of content”.
For the Court, blocking a Facebook page is tantamount to a loss of a “benchmark for making purchases”.
From these observations, the Court evaluates the commercial loss of Mr. C. to the sum of 20 000,00 euros.
In addition, the Court ordered SSF to transfer, at its expense, the trademark “Village Spiruline” to Mr. C. and to pay him the sum of 7,000.00 euros for the appeal proceedings.
This judgment has a double practical interest. It invites the increasing use of data on page traffic on social networks and the number of “like” or “follow” to demonstrate the reality of its investments and defend its interests before the judge; and it offers a possibility to oppose fraudulent use of the rights defense tools put in place by social networks such as Facebook by its competitors and to seek compensation.
