It is important to specify that the dispute takes place in the context of the French market. Cristal vision, optician, owns a word trademark “Cristal vision” and the domain name <cristal-vision.fr>. As Cristal vision blamed its competitor, Crystal vision, for using such a corporate name, the latter renounced to “Crystal vision” and picked “Crystal visual” as its corporate name. Crystal Visual then filed an application to register the eponym trademark “Crystal Visual” with the French National Institute of Industrial Property. The meager concession granted by Crystal Visual was not enough to bring satisfaction to Cristal Vision which, on the one hand, successfully opposed the registration of the “Crystal Visual” trademark and, on the other part, sued Crystal visual before the Paris court of first instance. Cristal vision asked the court: (1) to prohibit Crystal visual from using “Crystal vision” or “Crystal visual”; (2) to order the removal of the “Crystal vision” and “Crystal visual” Facebook, Instagram, and Google pages; (3) to order the cancellation of the domain name <cristal-visual.com> and (4) to order the defendant to pay 40,000 euros in damages.
In its judgment of March 22, 2022, the Paris court effectively admitted the infringement and prohibited Crystal visual from using “Crystal vision” in business. On the other hand, the court rejected the request to prohibit the use of “Crystal visual”, in part for the following reasons:
“24. Therefore, the contested business sign is relatively similar to the trademark, especially in its dominant element. However, since the latter is very weakly distinctive, the relevant public, reluctant to see it as an indication of origin, will be more attentive to the differences and details, and only a very strong similarity (…) would be able to cause a likelihood of confusion. Thus, the business sign designating optician services by the laudatory evocation of the crystal by making it rhyme with an English word evoking sight and adding a slight spelling anomaly (the ‘y’) will not be confused with the sign designating the same services by the same laudatory evocation but without rhyme, and by the use of a purely descriptive French word (vision)” (Paris Judicial Court, 3rd ch., 3rd sect., March 22, 2022, 20/12339).
Consequently, the request to delete the defendant’s Facebook, Instagram, and Google pages was rejected, as was the request to remove the domain name <crystal-visual.com>.
The situation is unusual. Here is a company facing legal (and therefore economic) risk against a competitor with a weak brand. Despite everything, it adopts a new sign, “Crystal visual”, which deviates sufficiently from the first mark and stands out from it by the rejection of the purely descriptive word “vision”. However, it should be noted that the court stated the “laudatory” nature of the two business signs in question. Hence the following reminder: the level of protection of a trademark and its ability to exclude competitors result from its distinctive power. The less descriptive, the better!
