In a recent decision, dated 18 December 2009, the Paris First Instance Court showed the limits of trade marks and author rights, but evidenced once again the particularity of the French concept of “unfair competition” (Concurrence déloyale).
Since 2003 the Belgian restaurant chain Quick Restaurants, has used a mascot named “Quickos” in France, which is shown below:
This mascot is protected as a Community trade mark, filed on 9 October 2002, for various products and services, and notably for restaurant services.
Quick Restaurants discovered that a French restaurant named “Boum Burger” used a mascot named “Boumy”, in order to promote its fast food services, which in their opinion reproduced the characteristics of Quickos.
Quick Restaurants therefore decided to bring an action against Boum Burger on the grounds of trade mark and copyright infringement, as well as unfair competition and parasitism.
The claimant considered that the main characteristics of its figurative Community trade mark were the head of the mascot, made in the shape of a hamburger, with two bulging eyes on top, and chips for the hair.
The signs being not identical therefore, the Paris First Instance Court analysed whether there is a risk of confusion between both signs in the mind of the target audience. As the trade marks in conflict are purely figurative, the appreciation of the risk of confusion is made by the analysis of the visual overall impression.
The First Instance Court considered that the signs present a low level of similarity, because of the different colour used (Quickos’ clothes are white and red, whereas Boumy’s are black), the position of the eyes, the chips in the ears of the mascot, the position of their arms. There is, according to the court, no likelihood of confusion for the consumer with average attention, and therefore no trade mark infringement.
In addition to the trade mark infringement claim, Quick Restaurants claimed that the character used by Boum Burger also infringed its author’s rights on its own mascot Quickos. Once again, the Paris First Instance Court held that the main characteristics of Quickos were not reproduced in Boumy, specifying that the only thing which could be protected was the combination of all the characteristics of Quickos, otherwise this would lead to the protection of a genre (the genre of characters with a hamburger head?).
Surprisingly however, the Paris First Instance Court considered that the affixing by Boum Burger of a mascot named Boumy, with a hamburger head on Boum Burger’s playground, which was next to Quick Restaurants’ playground, as well as on a fly sheet for its children’s menu, were unfair competition acts, as such a use is the kind that might create a confusion in the mind of the target audience, which this time, is children.
This difference in the appreciation of the “target” audience to be taken into account to evaluate the risk of confusion is quite surprising, as the court considered that it was the “average consumer” with respect to trade mark infringement. Whereas, it considered the target audience was children when it analysed the unfair competition acts, meaning that children had to be considered more attentive to mascots than adults are.
It appears that the court actually did not want to sanction Boum Burger’s acts on the ground of any private right, most probably in order to avoid the appropriation of a genre. However, the decision of the court, made on the ground of unfair competition, leads to the same solution: Boum Burger is prevented from using Boumy on its children’s menus and playgrounds, which means in practical terms that it will not use it anymore. In fact, Boum Burger had even ceased to use it before the court rendered its decision.