No likelihood of confusion: FitX wins trademark dispute against Tour de France

Trademark dispute before the EGC: "Tour de X" does not infringe any rights of the "Tour de France"

Overview: The dispute over the "Tour de X" brand

In the current Trademark dispute The question before the General Court of the European Union (EGC) was whether the fitness chain FitX may continue to use its "Tour de X" trademark without infringing the rights of the famous "Tour de France". The judgment of the EGC represents an important precedent in the field of trademark law, particularly with regard to the likelihood of confusion and the exploitation of well-known trademarks.

The decision has far-reaching consequences for companies wishing to use similar or descriptive brand names. It shows how important it is to consider the distinctiveness of brand elements and consumer perception.

Background to the case

Registration of the "Tour de X" trademark by FitX

In May 2017, the fitness chain FitX applied to the European Union Intellectual Property Office (EUIPO) to register the trademark

on. The brand was registered for a wide range of products, including clothing, shoes, games, toys, video game devices, sporting goods and equipment, as well as services in the areas of sports education, training, entertainment and sporting and cultural activities.

FitX intended to use the "Tour de X" brand for its sporting goods and course offerings to create an association with fitness and sporting activities. This should help to strengthen the brand image and stand out from the competition.

Contradiction by the "Tour de France"

The Société du Tour de France, the organizer of the world-famous cycling race "Tour de France", filed an opposition against this application. It relied on its own word and figurative marks, including the French word marks "TOUR DE FRANCE" and "LE TOUR DE FRANCE", the EU word marks "LE TOUR DE FRANCE" and the international mark, which is also protected in Germany,

and the EU figurative mark

The Société du Tour de France argued that the "Tour de X" brand represented a risk of confusion with its established brands and could possibly benefit from the fame and reputation of the "Tour de France".

Decision of the EUIPO and the EGC: No likelihood of confusion

Assessment by the EUIPO

The EUIPO examined the opposition and found that there was no likelihood of confusion between the marks "Tour de X" and "Tour de France" despite the partly identical or similar product range. The EUIPO argued that the element "Tour de" is descriptive and widely used in connection with cycling races and sporting events and therefore does not have a strong distinctive character. Furthermore, the use of the mark "Tour de X" would neither take unfair advantage of nor be detrimental to the mark "Tour de France".

Confirmation by the EGC

Dissatisfied with this decision, the Société du Tour de France challenged the EUIPO's decision before the General Court. However, the General Court upheld the EUIPO's decision and dismissed the Tour de France's action. The General Court found that consumers could sufficiently distinguish the two marks despite certain similarities.

The EGC emphasized that the reputation of the "Tour de France" was not based solely on the element "Tour de", but on the entire brand name "Tour de France". The term "Tour de" is generally descriptive and is often used in the context of cycling races and other sporting events, such as the "Tour de Suisse" or the "Tour de Romandie". It is therefore unlikely that consumers would make a connection between "Tour de X" and "Tour de France".

Reasoning of the EGC

Low distinctiveness of the element "Tour de"

The EGC found that the common element "Tour de" is only slightly distinctive. This is due to the fact that "Tour de" is frequently used in connection with sporting events and in particular cycling races and is therefore more descriptive than specific to a trade mark.

The fame and reputation of the "Tour de France" result from the entire mark and the world-famous cycling race associated with it, not from the "Tour de" element alone. This distinction is decisive for the assessment of the likelihood of confusion.

No connection in the eyes of the consumer

The EGC further argued that consumers would not associate the mark "Tour de X" with the "Tour de France". Although both marks share the element "Tour de", this common element is not sufficient to establish a likelihood of confusion. Consumers would be able to distinguish the marks due to their different contexts and overall impressions.

Furthermore, "Tour de" is a descriptive term that is frequently used in various sporting contexts. This reinforces the perception that "Tour de X" and "Tour de France" exist independently of each other and that there is no economic connection.

Outlook and legal options

Further legal remedy

Société du Tour de France may lodge an appeal against the General Court's decision with the Court of Justice of the European Union, limited to points of law. However, this would only be successful if it can be proven that the General Court erred in its application of the law.

Such an appeal could bring about the final clarification of these trademark law issues and possibly lead to a further clarification of the legal framework for trademark applications and oppositions.

Conclusion

The decision of the EGC clarifies that the fitness chain FitX may continue to use its trademark "Tour de X" without infringing the rights of the "Tour de France". This ruling emphasizes the importance of the distinctiveness of trademark elements and the perception of consumers in trademark law.

For companies, this means that they must carefully consider how strongly descriptive elements can influence distinctiveness when choosing their trademarks. At the same time, the ruling offers a certain degree of certainty that not every similarity automatically leads to a likelihood of confusion.

FAQs

• What was the main point of contention in the trademark dispute between "Tour de France" and "Tour de X"?
  The main point of dispute was the question of whether the "Tour de X" trademark infringes the rights of the "Tour de France", in particular whether there is a likelihood of confusion.
• Why did the EGC rule in favor of FitX?
  The EGC ruled that consumers can sufficiently distinguish the two marks despite their similarity and that the term "Tour de" is only slightly distinctive.
• What further legal steps are possible?
  An appeal limited to points of law may be lodged with the Court of Justice of the European Union against the decision of the EGC.
• What does the EGC's decision mean for other trademark disputes?
  The ECJ's decision could serve as a precedent and demonstrates the importance of the distinctiveness of trademark elements and consumer perception in trademark law.
• How often is the term "Tour de" used in connection with sporting events?
  The term "Tour de" is very common and is used for various cycling races and events, e.g. the Tour de NeussTour de Suisse or the Tour de Romandie.