The owner of the figurative Community trademark registered in black and white under the number 3950037, designating goods in Class 18, accused the company PIGANIOL of infringement trademark having a plaid color pattern by distributing umbrellas identical to those of the BURBERRY trademark.

The Court notes that the company BURBERRY LIMITED owns other figurative trademarks in its historical colors, beige and red, with marks have in common with the Community trademark in question an identical grid pattern.

The Court rules on the distinctiveness of the trademark.

It rules out several prior trademarks including the tartan WELSCH whose grid pattern disclosed BURBERRY’s tile pattern, after having taken into account the color differences with the black and white trademark of BURBERRY.

It therefore considers that the sign claimed by BURBERRY differs from the other checkered patterns falling within the generic pattern of the Scottish tartans and that it is sufficiently distinctive.

The Court also notes that even in the absence of any color claim, the grid of the trademark combines a specific geometric structure and concludes that the sign is sufficiently specific.

Therefore, the Court confirms the first instance judgment and validates the trademark.

It also confirms the judgment and dismisses the action for infringement against the company PIGANIOL.

The Court observes that regardless of the signs’ similarity with regard to the crossed lines forming the grid pattern, the PIGANIOL’s print has a khaki background with red and ocher lines unlike the Community trademark owned by the company BURBERRY LIMITED.

It concludes that there is no likelihood of confusion as to the origin of products, the specific colors of the grid PIGANIOL being the dominant element while they do not exist in the BURBERRY trademark.

Although infringement is determined on the basis of similarities as a whole and not of differences on the detail, the Court was careful to limit the scope of the trademark only to the black and white colors as filed, knowing that the grid pattern structure is part of the public domain.

Trademark law, which is a right of occupancy and not a right of creation, is thus subject to the limits of the weak distinctive character of a sign similar to a figurative generic pattern, with the exception for the colors, regarding the assessment of the infringement.

This decision was not appealed before the Court of Cassation. The decision is therefore final.