Citroën is a French car manufacturer and one of the market leaders in France. Founded in 1919 by André Citroën, the company has been using a “double chevrons” logo for many years, which has appeared on all Citroën’s models, including on the iconic 2CV and DS.
Citroën owns a number of registrations in France for different iterations of the “double chevrons” logo (“the Citroën Logos”), including:
Enters Polestar, a newcomer to the car market, which is linked to the Volvo Group and specializes in electric vehicles. Polestar uses a logo comprised of what one may see (as the name suggests) as a stylized pole star, subject of two European Union trademarks registered in 2017 at the EUIPO level (“the Polestar Logos”):
Considering that the Polestar Logos were in fact “two inverted chevrons”, Citroën decided to bring two cancellation actions based on deceptive similarity with their earlier “double chevrons” trademarks before the EUIPO in March 2018, as well as an infringement claim before the Paris courts in France in October 2019.
By decisions issued in January 2020 and July 2021, the EUIPO’s Cancellation Division and Board of Appeal successively rejected the cancellation actions on the ground that the parties’ respective logos were not similar enough to cause consumer’s confusion (in spite of the goods being identical). Citroën further appealed these decisions before the European Union General Court, the cases being currently pending.
Meanwhile, in France, the Paris Court (decision of June 4, 2020) and the Paris Court of Appeal (December 14, 2021) also found that the public was not likely to confuse the Citroën and Polestar Logos, which were deemed to be visually distinguishable, and rejected the trademark infringement claim.
However, Citroën had also based their action on claimed reputation of the “double chevrons” trademark in France and argued that use of “inverted chevrons” by Polestar – a direct competitor on the car market – was taking unfair advantage of, or was detrimental to, the distinctive character and repute of its famous logo.
Here, Citroën made use of specific provisions of French and EU laws, which aim to provide famous brands (“trademarks with a reputation” is the official legal term) with a greater and broader protection against third party’s attempts to ride on the trademark’s reputation and distinctiveness to unlawfully benefit from its owner’s efforts and investments.
While the French Courts found that the subject logos were visually similar only to a low degree, thereby incidentally confirming the EUIPO’s own assessment, the Paris Court of Appeal noted that Citroën had been using the “double chevrons” as their logo since 1919, that is for more than 100 years, that Citroën enjoyed a tremendous level of public recognition in France, was ranked third in terms of sales on the French market and had been making substantial and consistent promotional and marketing efforts over the years (estimated to an average of 300 million Euros per year).
Given the outstanding reputation of Citroën’s “double chevrons” logo, its higher degree of distinctiveness acquired through intensive use supported by significant advertising investments, the French Courts found that the use of “inverted chevrons” logos by Polestar could damage, dilute and blur the distinctive character of the Citroën Logos, especially since the trademarks were used in the automobile sector, where there are a relatively small number of manufacturers.
Thus, the French Courts ordered Polestar to cease all use of the conflicting logos in France for a period of six months, resulting in Polestar being temporarily banned from the French market.
Interestingly, the Paris Court of Appeal considered that the tremendous reputation of the Citroën Logos in France outweighed a lower degree of similarity of the trademarks and that the French public might still link the subject logos in some way.
Of course, we are talking about a major French brand defending its interests on the French market before the French courts and one might consider that Polestar could have hoped for a better outcome in other jurisdictions where the bond between the public and a brand like Citroën is weaker.
That said, this decision also shows how stronger the protection of “trademarks with a reputation” can be and how important it is to carefully select the grounds for actions and to have a solid fallback position, especially where the intrinsic similarity of the trademarks may be questioned.
Feel free to contact our Firm for any assistance in enforcing and defending your trademark rights in France!
Find all our articles on intellectual property on our blog #IPBoardingPass.