SUMMARY OF JURISPRUDENCE
Court of Appeal of Paris – April 25, 2017 – case n°16/08758
SAS MAISON DU MONDE FRANCE vs. SA GIFI.
The company MAISONS DU MONDE is the owner of the french trademark n° 99792285 of October 5, 1999 registered for numerous products and widely used in its 179 stores parts of its network in France and Europe.
The company GIFI filed the French trademark application n° 033220902 on April 15, 2003 in class 35 in relation with services for grouping, providing and presenting products to consumers for the sale and purchase of a large number of products. Advertising panels reproducing this mark have been attached to the facades of many shops or installed along roads. MAISONS DU MONDE, considering that this mark reproduced the characteristics of its trademark, assigned on 19 November 2008 the company GIFI for trademark infringement, unfair competition and parasitical attitude and also seeking the invalidity of the mark above mentioned.
After having seen its application rejected in first instance, and on appeal MAISONS DU MONDE filed an appeal before the Supreme Court. On 9 July 2013 the French Cour de Cassation overwhelmed the judgment of the Court of Appeal of Rennes in that it rejected its application on the basis of Article L713-5 of the IP code and referred the parties before tan other Court of Appeal. On 12 April 2016, after a second appeal brought by MAISONS DU MONDE, the Cour de Cassation again quashed the judgment of the Bordeaux Court of Appeal in that it rejected the application made by MAISONS DU MONDE, and referred the parties to the Court of Appeal of Paris which will render this judgment of April 25, 2017.
The central point of this dispute lies in the question whether the use of the mark constitutes or not an infringement of the trade mark
In the present case, the Court notes that, although the mark was placed on a yellow / ocher background, it appears from the documents adduced in the proceedings that it was exploited on an orange-colored background approaching the color of the brand « while the colors of the iconic brand GIFI are red and yellow ».
That argument relied on by the judges is debatable insofar as the other marks operated by the alleged counterfeiter company should in no circumstances be taken into account in order to determine the infringement alleged concerning another mark which it exploits.
In addition, the judges also point out that since 2010 MAISONS DU MONDE has used the only schematic representation of the house on its products. Again this argument is debatable because it is the mark as filed by the person who claims to be the victim of a trademark infringement and not such as to exploit it which must be taken into account. Indeed, taking into account the mark used to evaluate infringement, would considerably extend the proprietor's exclusive right and prevent third parties from knowing clearly and precisely what the right of the holder is, by simply reading the deposit of the brand. However, the judges deduce from these considerations that GIFI, in exploiting its mark has taken on features characteristic of the identity of the well-known mark .
The Court then assesses all the relevant factors in the present case and deduces a certain degree of similarity between the marks at issue, leading the relevant public to establish a link between those two marks, He does not confuse them. Especially since the company GIFI sell discount products, low quality, when MAISONS DU MONDE sell more upscale products, thus taking undue advantage of the attractiveness and reputation of this brand according to the judges.
Thus, the Court pronounces in particular the annulment of the registration of the trade mark , which is considered to infringe the well-known trademark . It prohibits GIFI from making use of this sign under penalty and orders it to pay to the MAISONS DU MONDE the sum of 500 000 € in damages.
That decision, and in particular the fact that the judges relied on trademarks as exploited, and not as filed for trademark infringement, is unprecedented in so far as it broadens the scope of the rights at issue. It cannot be ruled out that GIFI appeals against this decision.
CJEU – May 11, 2017
Yoshida Metal Industry Co. Ltd vs. EUIPO
On 3 and 5 November 1999, Yoshida Metal Industry Co. Ltd. (Yoshida) submitted applications for trademark registration to EUIPO for a two-dimensional representation of the shape of a product, namely a knife handle with Black peas claiming, in particular, class 8 cutlery and household utensils and containers in Class 21, the representations of which are as follows:
Those marks were initially refused registration on the ground that the signs at issue were devoid of any distinctive character, but the proprietor company nevertheless succeeded in obtaining the registration thereof following a decision of the Second Board of Appeal of the EUIPO. On 10 July 2007 a competitor company requested that the invalidity of those marks be declared, on the one hand, that they constituted the form of the product necessary to obtain a technical result, They were devoid of any distinctive character.
After numerous decisions, in particular before the TEU after the referral of the CJEU, Yoshida appealed to the CJEU in order to annul the decision of the TEU insofar as it had dismissed all its claims.
The central issue in this judgment is whether a sign consisting of the two-dimensional representation of a black polka dots knife handle is capable of being registered as a mark.
Yoshida argued, in support of its argument, that the signs at issue contained black peas, important decorative and distinctive elements, so that they did not therefore constitute a purely functional sign. That argument will be rejected by the Court of First Instance, which upheld the Court of First Instance's analysis of whether the specific configuration of the whole of the black peas constituted a significant non-functional element of the contested signs. Article 7 (1) (e) (ii) was, according to the Court, properly applied.
Moreover, the Court reiterates that this Article applies even if the sign in question is capable of fulfilling the function of guaranteeing identity of origin, in order to prevent undertakings from attempting to assume rights Perpetual exclusive on technical solutions.
This decision reminds us that if the registration of a two-dimensional mark reproducing the part of a product proves to be complex, its obtaining is not guaranteed over time, a fortiori in highly competitive sectors such as table Arts. Action for invalidity is a lever often used by competitors to try to annul brands whose scope could be detrimental to other players in the sector.