Opinions
General Court Tour de Force: no confusion between the sign ‘TOUR DE X’ and ‘TOUR DE FRANCE’ trademarks.
Nothing more newsworthy than a decision on the ongoing Tour de France.
On 12 June 2024, the General Court ruled out the likelihood of confusion, between the figurative mark ‘TOUR DE X’ and the earlier word and figurative marks bearing the expression ‘TOUR DE FRANCE’, upholding the decision adopted by EUIPO.
An abridged recap of the proceedings: the indomitable Société du Tour de France.
In May 2017, FitX Beteiligungs GmbH, a German fitness company, filed an application for an EUTM for the following figurative sign:
The trademark application was filed for goods in Class 25 and 28 which included, inter alia, Clothing, footwear and headgear, sports equipment, apparatus for exercising the body [physical exercise], sports articles and equipment but also services in Class 41 such as Sports education services, training, entertainment services, sports and cultural activities.
In August 2017, the French company Société du Tour de France filed an opposition before the EUIPO against the EUTM ‘TOUR DE X’ for all the applied goods and services, for likelihood of confusion under Article 8(1)(b) EUTMR and undue advantage, that the sign ‘TOUR DE X’ would take from the distinctive character or reputation of the earlier rights under Article 8(5) EUTMR or cause prejudice to them.
Indeed, the opposition relying on a number of earlier word and figurative trademarks bearing the terms ‘TOUR DE FRANCE’ or ‘LE TOUR DE FRANCE’ – such as the two of them shown below – registered for different goods and services also related to sportswear and sports.
In 2019, the EUIPO rejected this opposition in its entirety.
On 24 May 2019, the Société du Tour de France filed an appeal to the EUIPO against the decision of the Opposition Division, which was dismissed by the Board of Appeal.
The fierce Société du Tour de France challenged also this decision of the EUIPO Board of Appeal before the General Court.
EUIPO was right: General Court dismissed the appeal of the Société du Tour de France.
According to the General Court, the public will not confuse the two signs despite the identity or similarity of the goods and services and the enhanced distinctiveness of the trademarks of Société du Tour de France for the services for the organisation of cycling races.
Indeed, the only element found to be common between the marks, namely the expression ‘Tour de’, is weakly distinctive. Thus, when the earlier trademark and the sign applied for coincide in a weakly distinctive element in relation to the contested goods, the global assessment of likelihood of confusion does not lead to conclude that such a likelihood exists.
Reflections on the enduring legacy of ‘Le Tour’.
It may be true that ‘Tour de’ is a descriptive expression, very commonly used in the context of cycling races and similar events, which has very little, if any, distinctive character. However, this is certainly not a defeat for Société du Tour de France, because all of us hearing about the ‘Tour’ will think of La Grande Boucle.
All we can do now is sit back, enjoy the final stages and find out who will be wearing the hard-earned yellow jersey this year.
This newsletter is for the sole purpose of providing updates and general information and is not intended as legal advice on any particular or specific issue.
For clarifications or information, please contact the authors or your reference professional in the Intellectual Property area at our Firm.
Niccolò Ferretti, Partner
E: n.ferretti@nmlex.it
T.: +39 026575181
Valentina D’Adda, Trainee
E: v.dadda@nmlex.it
T.: +39 026575181
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