CARTIER INTERNATIONAL Ag (Suisse) et SOCIETE CARTIER c. SOCIéTE IPSEN PHARMA
TGI Paris 7.06.2012:
- Parties: CARTIER INTERNATIONAL Ag (Suisse) et SOCIETE CARTIER c. SOCIéTE IPSEN PHARMA
- Subject: Loss of trademark reputation
- Trademark: MUST
Cartier and Cartier international hold various "MUST" trademarks.
Ipsen Pharma, specialised in pharmaceutical products, holds various marks that include the term MUST, in particular, LES MUST DE L'UROLOGIE, LES MUST DE L'ENDOCRINOLOGIE, LES MUST DE L'ONCOLOGIE, LES MUST DE LA CARDIOLOGIE, LES MUST DE LA BIOTECH.
The Cartier companies argued that the aforementioned marks damaged the reputation of their mark MUST, and initiated a cancellation action against Ipsen Pharma in the Tribunal de grande instance de Paris (Paris District Court), seeking the cancellation of these trademarks.
The Court held that "although the reputation of the mark "MUST" has been acknowledged in prior court decisions, this does not change the fact that this reputation may be lost if the new significant part of the public that has developed over the generations does not know the mark for the products and services it designates, in particular due to a significant decrease in use."
It further held that "although the mark "Must" was indeed well known between 1970 and 2000, the advertising campaigns were intensive, and the catalogues and products were numerous during this period; (...) it appears that few pieces have been produced since 2006."
It adds that "judicial or amicable action to defend the mark "MUST" is not evidence of the exploitation of a mark."
The Court held that, at the time of filing of the trademarks at issue, the mark MUST could no longer be described as a mark a reputation, and dismissed the cancellation action against the trademarks of Ipsen Pharma.