Paris Court of Appel - SAS MAISONS DU MONDE France v/ SA LEROY MERLIN, SAS BENOIT LE TAPIS BROSSE & SAS ALSAPAN
n° RG 19/11532
SAS MAISONS DU MONDE France v/ SA LEROY MERLIN, SAS BENOIT LE TAPIS BROSSE & SAS ALSAPAN
LEROY MERLIN was represented by Arnaud CASALONGA, Attorney at Law.
Considering that a doormat and a range of industrial style furniture commercialized by LEROY MERLIN and BENOIT LE TAPIS BROSSE reproduced the combination of the distinctive elements of its "Atelier" doormat model and its "Docks" range of furniture, MAISONS DU MONDE sued SA LEROY MERLIN, SAS BENOIT LE TAPIS BROSSE & SAS ALSAPAN before the Paris Commercial Court on the ground of unfair competition and parasitism.
By a judgment rendered on April 8, 2019, the Paris Commercial Court ruled against LEROY MERLIN and BENOIT LE TAPIS BROSSE on the basis of unfair competition for the doormat model but dismissed MAISONS DU MONDE’s claims relating to the industrial furniture.
In its decision of June 15, 2021, the Court of Appeal of Paris rejected all the claims of MAISONS DU MONDE on both unfair competition and parasitism.
On unfair competition:
MAISONS DU MONDE argued that there was a likelihood of confusion between its doormat and furniture and those commercialized by LEROY MERLIN.
First, the Court recalls that the mere fact of marketing products that are identical or similar to those distributed by a competitor (which are not subject to intellectual property rights) is a matter of freedom of trade and is not wrongful, provided that there are not unfair maneuvers constituting in a fault such as the creation of a likelihood of confusion for the consumers as to the origin of the product.
In this case, the Court of Appeal considers that MAISONS DU MONDE has not provide evidence of the existence of likelihood of confusion between its doormat and that of LEROY MERLIN in that the latest presents “common elements such as the term ‘Welcome’ which is commonplace for a doormat often placed at the entrance of a home, and a large station clock on the left, as well as a representation of the Eiffel Tower on the right and the name of the city of Paris" and these elements are reproduce in a very different way on the two models of doormats, giving "a very contemporary overall impression, without creating a likelihood of confusion for the consumer”.
Such likelihood of confusion is even less proven since MAISONS DU MONDE commercialized its doormat from 2011 to the end of 2012, whereas the disputed doormat was offered for sale in March 2016, i.e. more than three years later. As a result, the consumer could not remember the MAISONS DU MONDE doormat, thus excluding any likelihood of confusion or any association between the companies in question.
Regarding the furniture, the Court noted that they "are part of the same industrial style, also called ’factory’, originating in particular from trade furniture, which has been in vogue since the 1980s [...] and over which MAISONS DU MONDE has no private rights".
Since the furniture in question does not have the same format or the same layout, the overall impression for the targeted consumer is very different, excluding any likelihood of confusion, and even any risk of association between the companies in question.
It is interesting to note that, to demonstrate the existence of a likelihood of confusion, MAISONS DU MONDE relied on a survey presenting to the consumers the two models of doormats and the two models of furniture, side by side and asking them whether there was a possible confusion between the two products.
It should be remembered that the survey is a tool that can be useful in matters of unfair competition or trademark infringement action in order to establish, in an objective manner, to what extent the relevant public concerned is likely or not to confuse the two products in question, or at least to establish a link between them; the survey can also be used to demonstrate the degree of awareness of a brand in the relevant market, and to demonstrate the notoriety or the reputation of a brand.
The following criteria are usually used to ensure that the survey is probative:
- the survey has to be carried out by an independent and recognized institute;
- the persons must be chosen in a representative way among the class of consumers concerned (sex, age, profession, and education);
- the method used and the circumstances in which the study was carried out, as well as the complete list of questions asked must be included;
- the manner and order in which the questions were asked are very important; such information should be indicated in the survey;
- it should be specified whether the percentage indicated corresponds to the total number of people questioned or only to those who actually responded.
On the other hand, it is important to avoid "biased" questions that distort the result and exclude any probative value for the survey.
In this case, the Court considers that the production of a survey artificially presenting the two doormats or the two pieces of furniture side by side, “when the consumer does not have them in front of him at the same time, given the different brands and marketing periods”, “does not establish the likelihood of confusion”.
The likelihood of infringement has been rejected.
Consequently, the Court dismisses MAISONS DU MONDE’s unfair competition claims.
On parasitism acts (free riding):
MAISONS DU MONDE claims "to have invested considerable sums to design exclusive models and to promote them, in particular through its catalogs", so that the defendant companies would have committed acts of parasitism by attempting to capture the commercial success of the disputed products.
The Court of Appeal first recalled that “parasitism consists in capturing an individualized economic value of others, the result of know-how, intellectual work and investments, and thus placing oneself in the wake of others, relying on the efforts and initiatives of an economic operator, whether a competitor or not, to gain customers and to unduly benefit from the investments made or the reputation acquired”.
In this case, the Court noted in particular that the doormats and furniture were only present on one or two pages of the MAISONS DU MONDE catalogs, of which there were more than 150, without being particularly highlighted, and did not appear on the cover page of the catalogs either.
Consequently, the Court of Appeal considered that the information provided by MAISONS DU MONDE "demonstrates the promotional and marketing efforts necessary for the activity of Maisons du Monde but does not justify any individualized creative efforts on the said products, nor any significant commercial success or particular notoriety for the claimed products, nor, above all, any wrongful capture by LEROY MERLIN, BENOIT LE TAPIS BROSSE and ALSAPAN”.
The Court of Appeal therefore also rejected the claims of MAISONS DU MONDE on the basis of parasitic competition.