We reported previously, in Bulletin No. 2 /2016 (page 15), on a case of the registration of the graphic trademark (shown below, packaging for Knoppers waffles, without any additional markings, with protection only for the two-colored background) for goods from class 30 of the Nice Classification, namely confectionery products, chocolates, chocolate products, cakes, ice creams, and ingredients for manufacturing such products.
The European Union Court of Justice confirmed the intellectual property rights owned by the French company “Forge de Laguiole”, but solely in areas in which it pursued an actual business activity.
A decision  dated 5 April 2017 of the European Union Court of Justice (EUCJ) put an end to the longstanding series of court decisions about the Laguiole trademark before the European Union jurisdictions (EU Jurisdictions), on which relied the right for French company “Forge de Laguiole” to keep using its business name. This decision also gave the EUCJ the opportunity to clarify the application of national case law by the EU Jurisdictions within the framework of proceedings based on Article 8 (4) of Regulation No 207/2009 (the “Regulation”) .
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.
Recap from the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.
On 17 February 2011, the company Rebel Media Ltd applied to the European Union Intellectual Property Office for the registration of a community trademark for the following graphic designation:
for goods and services in classes 12 (vehicles, land, air and water transport devices), 14 (including precious metals and alloys thereof, jewellery, gemstones), 18 (including leather, imitation leather and products from such materials), 25 (clothing, footwear, headwear), 35 (including advertising, in particular of electric vehicles, organization of advertising events) and 41 (education, training, recreation, sports and cultural events) of the Nice Classification.
On 16 September 2011, the company Automobile Club di Brescia lodged an opposition to the registration of the above mark in respect of all of the goods and services submitted.
On 19 October 2016, the Board of Appeal upheld a decision by the Cancellation Division entirely invalidating a graphic trademark registered on 7 December 2007 by the Hudson’s Bay Company. The basis for the invalidation was Article 51 par. 1a), pursuant to which a trademark must be deemed as having expired if it is not used for a period of five years.
The trademark in question consisted of four stripes of different colours: green, red, yellow and blue, and was registered as a graphic trademark, not as a combination of colours per se. The Hudson’s Bay Company used that colour combination on its products, but not in the form of stripes on a white rectangle, but as stripes running across the entire width of a product. The Cancellation Division found that, placed on a given product in that manner, the colours did not function as a trademark, that is, they did not serve to identify the origin of the product, but only constituted a decorative design. In addition, the products themselves appeared in different colour versions and not in the version reserved for the mark.
The Cancellation Division found that the relevant target group of consumers perceived the striped pattern as a design, and not as a trademark, and that the Hudson’s Bay Company had not provided evidence attesting that this was not the case. The Hudson’s Bay Company lodged an appeal against the decision to invalidate, arguing, among other things, that the colour combination used always consists of four colours of evenly placed stripes in the colours green, red, yellow and blue. The company added that, of course, the colour scheme does constitute a decoration, but is used for the purpose of identifying the company.
The Board of Appeal dismissed the appeal. It found that the trademark had been registered as a graphic mark, not as a colour combination. Therefore, the use of the trademark cannot differ from what was registered, and so the same combination of colours must appear in the same order and in the same proportions. The Board of Appeal found that, used in the manner it is, the mark should not have been registered as a graphic trademark, but as a colour combination per se. Certainly, the Hudson’s Bay Company would then enjoy such protection, and there would be no doubt concerning actual use. Nevertheless, because the colour combination was registered as a graphic trademark, the Board of Appeal upheld the stance of the Cancellation Division that the trademark registered had not actually been used for five years and dismissed the appeal.
By: Daria Golus
From the K&L Gates publication Trademarks and Unfair Competition, Quarterly Bulletin, 1/2017 – click here.
Cartier Wins Over the Request of Interim Relief by an Italian Company
Recently, an order of the court of Venice raised the matter of the shape of the product intended as a ground for refusal to registration and invalidity of a trademark.
The case is also interesting because it relates to the luxury sector and involved a leading firm in the jewelry sector, Cartier. An Italian jewelry producer, Fope S.r.l., sued Cartier alleging trademark counterfeiting and unfair competition for having marketed a jewelry collection reproducing a particular element of its icon product. This iconic shape was previously registered as an Italian and European trademark. Cartier claimed the registered trademarks were invalid on the basis that they are composed by the shape giving a substantial value to the product and such circumstance represents a ground for refusal to registration by law.
Italian Supreme Court Outlines Criteria to Conduct a Proper Likelihood of Confusion Test
On 27 May 2016, the Italian Supreme Court released a judgement recalling with clarity and completeness most of the consolidated principles concerning the assessment of the likelihood of confusion between trademarks. This judgement is to become a good instrument for professionals when addressing to the topic at issue as well as a reference for future decisions of the Courts of merit.
The Italian Supreme Court Finally Stated on the Long-Standing Fiorucci Case
On 25 May 2016, the Italian Supreme Court released an interesting decision on the use of patronymic as a trademark, which might have significant impact for many fashion and design firms which identify themselves with the name of their founders.
Edwin Co. Ltd., Edwin International and F. Design Office, which had previously acquired from Mr. Elio Fiorucci the ownership and the right of use of several trademarks containing the name ” Fiorucci”, filed an action against the designer because he was using and applying for registration of the trademark “Love Therapy by Elio Fiorucci” to identify a wide range of goods.
On 19 April 2016, the Italian Supreme Court passed on secondary meaning, overruling two sets of proceedings of the courts of merits which declared the invalidity of a trademark.
The case arose some debate among professionals since the trademark declared invalid was registered by a very well-known bathroom tissue producer which invested substantial efforts for decades to ensure that its registered generic sign (“Rotoloni” which literally means big toilet roll) had acquired distinctiveness by way of secondary meaning.
As a result of its efforts, the defendant offered a public opinion survey evidencing that 51% of interviewed consumers were recognizing the generic sign at issue as distinctive of products coming from a specific company. Read More