Tag: France

Sky v Skykick AG – is this the end of a claim for “computer software?”
Implementation of the EU “Trademark Package” in France
Getting closer to put the UPC into force
FR: Will the misleading use of a geographical indication for handicraft products be deemed counterfeiting? The “Laguiole” case

Sky v Skykick AG – is this the end of a claim for “computer software?”

On 16 October 2019, Advocate General Tanchev of the CJEU has issued his opinion in Sky v SkyKick one of the most intriguing trade mark cases at the moment which will likely have a significant impact on EU trade mark law. Crucially the AG has advised that:

  1. “registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest” because it confers on the proprietor a “monopoly of immense breadth which cannot be justified”, and it lacks sufficient clarity and precision; and
  2. trade mark registrations made with no intention to use, in relation to the specified goods and services, may constitute bad faith.
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Implementation of the EU “Trademark Package” in France

Further to the adoption of the so-called Trademark Package at European level, comprised of Regulation no.2015/2424 (as codified by Regulation no.2017/1001 dated 14 June 2017) on EU Trademarks (the “Regulation”) and Directive no.2015/2436, harmonizing Member States’ trademark regime (the “Directive”), both dated 16 December 2015, France was due to update its internal regulatory framework.

The PACTE Act no. 2019-486, adopted on 22 May 2019, implemented the Trademark Package at long last. While the Regulation addressed EU aspects and is of direct enforcement within Member States, the Directive provided Member States with some leverage on the internal implementation.

These new aspects aim at simplifying the enforcement of intellectual property rights (“IPR”), for both trademarks and the patents, by creating administrative procedures, rather than having to introduce a judicial action before the courts.

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Getting closer to put the UPC into force

April 26, 2018 is a remarkable date: first it’s World IP Day celebrating IP around the world. Second, and this is unique, the British IP Minister Sam Gyimah MP announced that the UK ratified the Unified Patent Court Agreement (UPC Agreement). By doing so the UK agreed to be bound to both the UPC agreement and the UPC’s Protocol on Privileges and Immunities (PPI). The UPC will be a court common to the contracting member states within the EU having exclusive competence in respect of European Patents and European Patents with unitary effect.

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FR: Will the misleading use of a geographical indication for handicraft products be deemed counterfeiting? The “Laguiole” case

As stated in a previous article published in the Trademark and Unfair Competition Bulletin (page 11) , the Act no. 2014–344 on consumer protection, named the “Hamon Act” and dated 17 March 2014, created a new industrial property right: the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels et Artisanaux”, hereinater, “IGPIA”) in order to include industrial and handicraft products in the scope of the protection of geographical indications.

In the same article, the authors highlighted the fact that prior to the implementation of the aforementioned provision, there was a lack of protection since a third party could use the name of a famous place or city and register it as a trademark to misleadingly sell handicraft products under that name.

Introduction to the Laguiole case

A famous example was the “Laguiole cutlery” case where a third party, among others, was using the famous French city name of “Laguiole” as a trademark to flood the market with knives made in China under that brand. Following the scandal that ensued, the Laguiole municipality launched an action against several companies and legal persons that had registered 27 trademarks in total, on the ground that such use of “Laguiole” was deceptive.

Indeed, the trademark “Laguiole” had been filled in almost all trademarks’ classes and therefore the Laguiole municipality was prevented from using such trademark for its own activities and, in particular, for its renowned cheese and cutlery.

After a first-instance ruling, the Paris Court of Appeal rejected the Laguiole municipality’s action in 2014 which was subsequently presented to the French Supreme Court (“Cour de cassation”).

The Cour de cassation ruling

By a ruling dated 4 October 2016, the Cour de cassation overturned parts of the ruling of the Paris Court of Appeal and welcomed arguments of the Laguiole municipality.

Indeed, the Cour de cassation considered that the use of the “Laguiole” trademark by the defendants was misleading and confusing to consumers since the products sold under that trademark were not manufactured in such place.

In addition to such argument based on consumer protection laws, several arguments grounded on trademark law were also favourably received by the Cour de cassation. However, as such court only has jurisdiction over legal qualification but not on facts, the end of this saga will be written by the Court of Appeal to which the case has been remanded to for the final ruling.

The Court of Appeal will hopefully close the ongoing debate. However, the Court of Appeal may also side with the initial Paris Court of Appeal ruling. In such a case, the Cour de cassation may have to hear the case again.

Nevertheless, such litigation intervenes in a context where IGPIA has effectively become protected. Even if Laguiole was not among the five applications filed for IGPIA in France (out of which only one has been granted so far), the broad power given to geographical indications with the adoption of European Regulation No 2015/2424 amending the Community Trade Mark Regulation and the European Directive No 2015/2436 approximating the laws of the member states relating to trade marks may have an impact on actors’ practices.

Indeed, according to these regulations, the national right granted on geographical indications through IGPIA or otherwise conferred by the courts, may materialize a ground for refusal for not only trademark applications but also for European trademarks. There is thus a strong incentive to seek this protection by any means necessary.

By: Claude Armingaud and Olivia Roche

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