SUMMARY OF JURISPRUDENCE

 

 

European Court of Justice – Case C-598/149 – April 5, 2017, EUIPO (FORGE DE LAGUIOLE) vs. Gilbert Szajner

 

After a procedure lasting nearly twelve years we finally get the outcome of the case that has opposed the French company name FORGE DE LAGUIOLE to the European Union trademark LAGUIOLE filed on November 20, 2001. This trademark had already been the subject of numerous disputes but was finally registered on 17 January 2005. This mark designates many goods and services in classes 8, 14, 16, 18, 20, 21, 28, 34 and 38.

 

FORGE DE LAGUIOLE had given no relief to the newly registered trademark LAGUIOLE by filing an application for partial annulment before EUIPO in July 22, 2005. This application for a declaration of invalidity was based on the company name FORGE DE LAGUIOLE used for the activities of “Manufacture and sale of all articles of cutlery, chiseling, giftware and souvenirs - all articles related to tableware ".

 

From that moment decisions follow one another and are not alike. For the record, in November 2006 the Cancellation Division rejected the application for a declaration of invalidity.

 

Then, in 2011, the Board of Appeal declared that the LAGUIOLE trademark was declared void for all products in classes 8, 14, 16, 18, 20, 21, 28 and 34 but maintained regarding class 38 services (telecommunications, etc.). In particular, the Board considered that, even if a corporate name is, as a matter of principle, protected for all activities covered by its subject-matter, and if the subject-matter is sufficiently precise, such protection is limited to “the sectors in which it had effectively carried on its activities with the filing of the LAGUIOLE trademark”.

 

In the present case, it considered that “all the goods designated by that mark were encroaching on the [FORGE DE LAGUIOLE] sectors of activity or were in related sectors', with the exception of Class 38.

 

In reply, Mr. SZAJNER, the owner of the trademark LAGUIOLE, lodged an appeal before the Court of First Instance of the European Union on October 21, 2014 which considered that there was a likelihood of confusion solely certain products expressly marketed by FORGE DE LAGUIOLE and cancelled the decision of the Board of Appeal for the other products.

 

EUIPO and FORGE LAGUIOLE filed an appeal before the ECJ which then confirmed the judgment of the Court of First Instance.

 

Apart from putting an end to this legal battle, which will undoubtedly revive the ardor of legitimate right holders of the term LAGUIOLE, this decision also gives the Court the opportunity to rule on the validity of taking into consideration a decision issued by a national court after the decision of an EUIPO body, in this case the decision of the Court of Cassation rendered on July 10, 2012 ruling on the scope of the protection of a corporate name.

 

The Court states that “the Court must apply a rule of national law as interpreted by the national courts on the date on which it renders its decision” (paragraph 42) and even if this may lead the court to “an assessment of a rule of national law which differs from that of that Board of Appeal”.






EUIPO Board of Appeal – March 10, 2017 –Case R 1633/2015-3 – Franz Schneider GmbH&Co KG vs. Bednarski


Bednarski is the owner of a Community model designating “vehicles (toys)” and in particular composed the below views:

 

                        BednarskiBednarski

 

 

 

The Franz Schneider company has asked for this model to be invalidated on the basis of the absence of novelty on the one hand and lack of individual character on the other hand, based on an earlier model whose representation is as follows:

 

Schneider

 


1) The appreciation of novelty

 

The Board of Appeal considers that the category of products to be taken into consideration being very broad, it should be restricted to “ride-on toy excavators”. That identification makes a useful distinction between the goods in question, on the one hand, toys representing other vehicles and, on the other hand, small-scale hand-held vehicles reproductions.

 

In this case, the differences in the design of the seat of the two toy-excavators, is "alone and by far", sufficient to exclude any identity between the models. The seat is almost flat in the earlier model while it has a clearly visible backrest in the contested model.

 

2) The appreciation of individual character

 

The Board of Appeal drew particular attention to the determination of the informed user and concluded that in the present case there were two informed users to be taken into consideration:

  • The child aged 3 to 4 who this toy is destined to. According to the Board of Appeal, “experience shows that children of that age are capable of identifying toys with that they want to play with”;
  • Adults, who buy the product and participate in the selection process, and who have to supervise the child who plays with the toy in question.

 

It would be wrong, however, to take into consideration adults who buy toys for themselves even in the notion of informed user insofar as the parties agree that this type of toy is intended for children between 3 and 4 years of age.

 

In view of the foregoing, the contested model is therefore maintained in its entirety.




 

 

Opening sunrise phases for new domain name extensions

 

As you know, the number of reserved domain names is constantly increasing, notably thanks to the dozens of new extensions that are launched each month.

 

We would also like to draw your attention to the following extensions, of which the Sunrise phases are in progress, or soon to be opened according to the schedule below:

 

TLD

Sunrise

Landrush

General Opening

.OBSERVER

16/02/2017-17/04/2017

19/04/2017-22/04/2017

22/04/2017

.REALTY

16/02/2017-17/04/2017

19/04/2017-22/04/2017

22/04/2017

.AFRICA

04/04/2017-02/06/2017

05/06/2017-19/06/2017

04/07/2017

.HEALTH

08/05/2017-07/07/2017

09/03/2017-07/07/2017

n/c

.CREDITUNION

04/05/2017-03/06/2017

06/06/2017

n/c

.RADIO

30/08/2017-01/11/2017

30/08/2017-01/11/2017

n/c

.ZUERICH

19/02/2018

n/c

n/c

 

In addition, the .MOI extension is now open to everyone!

 

We are at your disposal to advise you and proceed to the reservation of domain names among these extensions.

 

 

Publication date : April 2017


Contacts : Marion LAPERRIERE and Béatrice DAUBIN

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