The Paris Court of first instance («Tribunal judiciaire de Paris ») acknowledged the existence of a likelihood of confusion.

Does the incorporation of a trademark within a complex trademark imply the existence of a likelihood of confusion? In light of the case law of the Court of Justice of the European Union, particularly the Thomson Life decision of October 6, 2005, a likelihood of confusion may exist when the prior trademark, reproduced in a subsequent trademark containing other elements, exhibits an "autonomous distinctive position."

According to this concept, the likelihood of confusion can be established even with the addition of elements in the contested trademark when it reproduces fully or in its characteristic elements the prior trademark.

The Paris Court of first instance applied this concept in a decision dated December 1, 2023.

Factual Background

Upon the launch of a new perfume named "Gaultier Divine," the owner of the French verbal trademark "Divine," registered in 1929 for perfumery and beauty products, and Marketing Beauté Associés, the licensee exploiting this trademark, initiated legal action for infringement and unfair competition against the French company Puig.

The plaintiffs also sought the partial cancellation of the trademark "Gaultier Divine" for perfumery products. It was, therefore, the Court's task to assess the likelihood of confusion between the trademarks "Gaultier Divine" and "Divine."

Paris Court’s Assessment

 In defense, Puig argued the absence of a likelihood of confusion due to:

• the weak distinctiveness of the term "divine," particularly since over 100 trademarks for similar products contained this term,
• the perception that "Gaultier Divine" should be seen as an indivisible whole,
• the prominent positioning of the renowned "Gaultier" trademark within "Gaultier Divine."

These arguments were dismissed by the Court, which asserted that consumers are likely to believe these products have a common origin. The Court held that the term "Divine" maintains an autonomous distinctive position in the trademark "Divine Gaultier" due to:

• the absence of a combined meaning between the words Gaultier and Divine,
• the predominant emphasis on "Divine" on perfume packaging,
• the intrinsic distinctive power of "Divine" for denoting perfumes,
• and the fact that "Gaultier" is an umbrella brand.

Considering the identity and/or very high similarity of the products – both being perfumes and body care products – it was thus considered that the use of the trademark "Divine Gaultier" for identical products constitutes acts of infringement of the prior trademark "Divine." Puig was consequently ordered to cease using the trademarks "Divine" or "Gaultier Divine" for perfumery and cosmetic products and to withdraw the relevant products from commercial channels.

Unsurprisingly, the Tribunal also granted the partial cancellation of the trademark "Divine Gaultier" for perfumery and cosmetic products.

On the grounds of unfair competition, however, the Court rejected the plaintiffs' claims regarding harm to the trade name, business sign, and domain name since they failed to demonstrate distinct facts from those alleged under trademark infringement, thus applying conventional rules regarding the accumulation of actions for trademark infringement and unfair competition.

Decision Reference: Paris Court of first instance (« Tribunal judiciaire de Paris »), December 1, 2023, Case No. 23/11158, Yvon Mouchel and S.A.S. Marketing Beauté Associés / S.A.S. Puig France.