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The curse of the "fly boats" in General Court
In case T-72/14, the General Court issued the latest Judgment in the BATEAUX MOUCHES saga.
OHIM rejected the CTM application for Class 37 'shipbuilding services and especially tourist boats and components of these boats.' The General Court upheld the contested decision finding that the mark applied for was descriptive and devoid of distinctive character for all the services under Article 7, paragraph 1, b) and c) of the Regulation No 207/2009 and that it had not acquired distinctive character through use within the meaning of Article 7, paragraph 3 of CTMR.
Due to the nature of the services, the relevant public is composed of French speaking professionals dealing with shipbuilding who are well informed, observant and circumspect.
Currently, the term "bateaux mouches" is the common name, in French, of a type of vessel, ie a vessel intended for passenger transportation by river for tourist purposes. The Board of Appeal also noted that in the dictionary Le Grand Robert , which is mentioned in the letter of the French Academy produced by the applicant before the Board of Appeal, the term "bateaux mouche" is defined as "motorboat service in Paris and used to carry passengers." The Board of Appeal further noted that the dictionary defines "bateaux mouche" as meaning "boat that was once used for passenger traffic on the Seine and today is used for tourist rides." The Board of Appeal also stated that, as is clear from the letter of the French Academy produced by the applicant, the latter did not intend to change that definition.
As the Court has already ruled in judgment of 10 December 2008, (T-365/06), the fact that the applicant was the first company to adopt in 1950 the term bateaux mouche ("fly-boats") as a mark to designate river tourism activities do not rule out that the mark in question has become, thereafter, the common name of vessels intended for passenger transport by river for tourist purposes. Indeed, without the need to check whether the sign enjoyed a distinctive character in 1950, it should be noted that a sign that was capable, at one time, to constitute a trade mark, due to its use by third parties as a customary designation of a product or service, may become generic and lose the ability to exercise the functions of a trade mark
As far as the argument of the applicant that the use it has made over the years of "BATEAUX MOUCHES” as a trade mark for its river tourism activities and various other activities has given to this term a distinctive character, it can not succeed. The applicant submitted no evidence that the term was protected as a trademark and everything seemed to lead that it was, rather, an expression of everyday language to describe a type of craft for transporting tourists by river and this function does not appear to be limited to the Seine in the mind of the relevant public.
Considering the alleged acquired distinctive character through use acquired by the mark, the applicant had the onus to demonstrate that the "bateaux mouches" sign had acquired distinctive character through use throughout the French territory of the Union where it was devoid of it, namely France, Belgium and Luxembourg. In this regard, the documents produced by the applicant did not constitute direct evidence of the acquisition of distinctive character by the trade mark, which depends on the perception of the sign by the relevant public. Even if these documents establish that the sign for which registration was sought had gained some public recognition in France, for tourism services of the applicant, there was no evidence of the acquisition by the sign of a distinctive character for shipbuilding services for which registration was sought.
For example contrary to what the applicant submits, nor the extract the website of Upper Seine sites nor the news articles on the boat "Jean Bruel" are capable of proving that francophone industry professionals shipbuilding perceive the term "Bateaux Mouches" as an indication that the applicant provides shipbuilding services under this brand. It appears instead from these documents that it was the Haute Seine shipyards that provided services of shipbuilding to the applicant by building the boat "Jean Bruel." Moreover, the evidence was particularly deficient for Belgium and Luxembourg.
Posted by: Laetitia Lagarde @ 05.56Tags: GeneralCourt, absolute grounds, shipbuilding services,
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