Tour de France wins a stage, but not the race

Summer is just around the corner, full of sporting events including the famous Tour de France. 

The Company Tour de France (‘TdF’) is the owner of various trade marks for TOUR DE FRANCE and LE TOUR DE FRANCE (word and figurative - see below) covering goods and services notably in classes 25 (clothing, etc.), 28 (sporting articles; etc.) and 41 (entertainment; organization of competitions for education or entertainment; organization of sporting events; etc.) (‘TdF’s Earlier Rights’).

TdF filed an opposition against all goods and services in classes 25, 28 and 41, covered by the European Union trade mark application for ‘TOUR DE X’ as shown below, in the name of a German fitness company, pursuant to Articles 8(1)(b) and 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark.

The Board of Appeal dismissed the opposition on the grounds that there was no likelihood of confusion between the signs under comparison, and that the use of the EUTM application in relation to the covered goods and services was not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of TdF’s Earlier Rights. 

TdF appealed the decision to the General Court.

Unfortunately for TdF, the General Court dismissed the action in its entirety, confirming the Board of Appeal’s position. 

Despite the identity/similarity between the goods and services as well as the enhanced distinctiveness acquired through use of TdF’s Earlier Rights for the organisation of cycling competitions, the General Court considered that the relevant public would not confuse the marks under comparison because of the low degree of distinctiveness of the common element TOUR DE as well as the low degree of similarity between the rights at issue.

TdF also relied upon the reputation in the earlier trade marks for LE TOUR DE FRANCE. The General Court considered that the descriptive expression TOUR DE is “very commonly used” in the context of cycling competitions and has therefore “very little (if any) distinctive character”. This term will not lead the relevant public to perceive a link between the marks under comparison, even if the reputation of TdF’s Earlier Rights were exceptionally high.

The outcome is perhaps disappointing a couple of weeks before the Grand Départ, but the reputation of TdF’s Earlier Rights was confirmed meaning that TdF achieved at least a stage win.