By Aída Tarí Lázaro, Head of the Trademarks and Brand Intelligence Department at PONS IP

On 12 June 2024, just before the start of the well-known Tour de France, the General Court of the European Union (CJEU) dismissed the appeal brought in case T-604/22 by the Société du Tour de France, seeking annulment of the decision of the Board of Appeal of EUIPO concerning the registration of the European Union trademark for, inter alia, sporting activities.

In its decision, the General Court upholds the decision essentially on the basis of the previous analysis and considers that the use of the mark TOUR DE X for the goods and services concerned, classes 25, 28 and 41, will not take unfair advantage of the distinctive character or the repute of the trademarks of the Société du Tour de France nor will the public establish a link between the signs, since, inter alia, the distinctive character enhanced by the use and the repute of the marks Tour de France and Le Tour de France do not extend to the common element of the marks at issue.

Introduction | Background

In May 2017, the German company FitX Beteiligungs GmbH, filed an application for registration of the trademark TOUR DE X for various goods such as clothing, games or sports equipment, as well as educational services in the field of sport, training or entertainment.

Following opposition from the French company Tour de France, known in the world of cycling, on the basis of its word marks “TOUR DE FRANCE” and “LE TOUR DE FRANCE”, EUIPO considered that although the goods and services were identical or similar, there was no likelihood of confusion and that the use of the new application did not take unfair advantage of the original marks.

Analysis

The General Court finds that the differences between the signs and the average distinctive character of the letter “x” considerably reduce the similarity resulting from the common expression “tour de” and its position.

It therefore concludes that the signs have a low degree of visual and phonetic similarity.

Even if the contested mark were perceived as referring to a cycling competition, there would only be a low degree of conceptual similarity because the relevant public would distinguish said competition from the specific competition which is the Tour de France.

As regards the greater distinctiveness and repute of the earlier marks TOUR DE FRANCE and LE TOUR DE FRANCE which were shown to have been acquired through use, it is where the GC introduces in the decision that it applies to the earlier rights as a whole, and not to the element “tour de’.

Therefore, due to the low degree of distinctiveness of the common element “tour de” and the low degree of similarity between the signs, there is no likelihood of confusion.

It adds that even if the repute of the earlier marks were exceptionally high, the descriptive expression “tour de”, which is very commonly used in the context of cycling competitions, has very little, if any, distinctive character.

Therefore, the use of this expression alone will not mislead or induce the relevant public to establish a link between the marks, and the use of the contested sign is not likely to take unfair advantage of or be detrimental to the distinctive character or repute of the earlier rights.

Conclusions

This decision only confirms the fact that trademarks are unlikely to be considered similar and that a likelihood of confusion will be recognised where the common element has little distinctive character.

The repute of a trademark as a whole does not automatically extend to the weak or non-distinctive elements included in it.