On 8 April 2016, the High Court of First Instance of Paris rendered a judgement in which it ruled that trademarks composed of the sign LOL are devoid of distinctive character (Tribunal de Grande Instance de Paris, 8 avril 2016, n° 14/18057).
In the present case, a French company sold several goods, and notably pencil cases, on which the acronym LOL is reproduced. Another company, which owns notably several LOL trademarks, sued the first one for counterfeiting of its trademarks rights.
Contrarily, the defendant argues that the plaintiff’s trademarks are devoid of any distinctive character since the sign LOL will not be perceived by the average consumer as an indication of the specific commercial origin of the relevant products. Therefore, the plaintiff’s trademarks must be cancelled.
The High Court of First Instance dismissed the plaintiff’s action, ruling that under the Article 7 of Regulation 40/94 of 20 December 1993 (applicable to EUTM n°5843933 and n°6966428) and under the Article 7 of Regulation 207/2009 of 26 February 2009 (application to EUTM n°9392002), those trademarks are not sufficiently distinctive to qualify as a mark and thus the Court cancelled their registration.
The Court notably stated :
« … LOL, is an acronym meaning « laughing out loud », used commonly to indicate laughter in three letters and to convey the symbol of mirth or merriment and whose meaning is easily understood by the French consumer and anglophone ».
Since LOL is a common and universal term, which has a strong sense for the average consumers, their attention will only be focused on the hereabove meaning. Thus, the sign LOL won’t be perceived by the relevant public as an indication of the commercial origin.
The decision can be challenged before the Court of Appeal of Paris.
Tribunal de Grande Instance de Paris, 8 avril 2016, n° 14/18057
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Gaëtan Bourdais, Avocat
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