The recent case involving Société du Tour de France against the German fitness studios chain FitX has reignited the debate on the risk of confusion between similar trademarks in the context of EU law.
The issue concerned the registration of the figurative trademark “TOUR DE X”, requested by FitX Beteiligungs GmbH on May 2017 for classes 25, 28 and 41 (among which sports items and sports activities) before the European Union Intellectual Property Office (EUIPO).
In August 2017, Société du Tour de France, owner of the trademarks “TOUR DE FRANCE” and “LE TOUR DE FRANCE” filed an opposition against the registration of the “TOUR DE X” application, claiming that the new trademark would have generated confusion among consumers, unduly benefitted from the notoriety of the more known trademark and damaged its reputation.
EUIPO and the Decision of the Commission appointed to evaluate the application for registration concluded that, even though the claimed goods and services were identical with or similar to those covered by the Société du Tour de France trademarks, there was not any risk of confusion between the two trademarks. According to the Office, the “TOUR DE X” trademark would not have unduly benefitted from the trademarks of the French company, nor it would have caused them any prejudice.
Unsatisfied with the decision, on May 24, 2019, the Société du Tour de France presented appeal before the Court of the European Union, which confirmed the analysis of EUIPO. The judgement of the Court issued on June 12, 2024 (case T-604/22) considered that the public would not have confused the trademarks, despite the identity and similarity of the goods and services. Moreover, it highlighted that the common element between the trademarks – “tour de” – has a very weak distinctive character. This, together with the limited level of similarity between the signs, led the Court to conclude that the “TOUR DE X” trademark could not have exploited in an unduly way the notoriety of the “TOUR DE FRANCE” trademark and could not have caused prejudice to its distinctive character.
Distinctive Character and Risk of Confusion
The case at issue allows us to reflect on the notion of “risk of confusion”, a central element in the protection of the consumer and rights of the owner of the trademark.
The risk of confusion arises when an average consumer when comparing two distinctive signs could be led to believe that the goods and services offered, bearing such trademarks, come from the same entrepreneurial origin or from enterprises economically linked (risk of association). In evaluating such risk, EUIPO and the competent Courts take into consideration many factors, among which the identity or level of similarity between the signs, the identity or affinity between the claimed goods and services, and the distinctive character of the previous trademark. In this case, the Court found that the expression “tour de” is largely used in the context of cycling races and similar events, and therefore it has a weak distinctive character, if even inexistent. This weakness of the common element played a crucial role in the final decision.
The impact of the weak distinctive character
The acknowledgement of the weak distinctive character of a common element such as “tour de” is significant because it highlights the importance of an overall evaluation of the risk of confusion that is not limited exclusively to the presence of a similar element in the two trademarks in conflict.
Even if trademarks can share a common element, the context in which such element is used and its meaning as perceived by the target audience are crucial to establish the existence of a risk of confusion. In the case of Société du Tour de France, the Court concluded that the use and notoriety of the “TOUR DE FRANCE” trademark do not extend to the element “tour de”, which is considered descriptive and of common use. This allowed the rejection of the argument according to which “TOUR DE X” could have unduly benefitted from the “TOUR DE FRANCE” trademark.
Carlo Callea