the protection of the marks

Following the article published on blog of Legitiname concerning the decision of the center of arbitration and mediation of OMPI to return the domain name sfrarnaque.com with the holder of the mark, I wished to quickly take stock on delicate balance between protection of the mark and freedom of expression.

In the case of sfrarnaque.com the expert precise in his decision that, I quote, “the goal of the defendant is systematically to disparage the applicant by treating it of swindler what constitutes an abuse the right to the freedom of expression.”

One can then deduce that the freedom of expression can be called upon to be defended of an action in contrafaçon of mark if the purpose of it is not to disparage the mark. Contrary to the jurisprudence of the time, the supreme court of appeal decided clearly for the existence of an exception based on the freedom of expression in 3 very famous cases from now on: the Danone business in 2003 (with jeboycottedanone.com) and the businesses Areva and Esso against Greenpeace in 2004.

In France, the right to the freedom of expression seems from now on clearly recognized with triple condition that there is no confusion possible between the mark to be protected and signs it which parodies it, that no damage does not result, due to an intention of denigration or depreciation of the parodied mark, and which the parody does not continue a commercial purpose.

In the species, in the business SFR, the defendant does not have a commercial activity dependent on this domain name but according to the expert, “the domain name <sfrarnaque.com> recorded by Mr Zeev Arzoine is similar to the point to lend to confusion with the marks of the applicant” and “the domain name sfrarnaque.com was recorded and used insincerely” (denigration).

Conflicts of the same style, opponent holders of marks and defendants of the freedom of expression are still likely to be born with the advent of Web 2.0.

See the decision: Société Française du Radiotéléphone, SFR contre Zeev Arzoine