Storming MONT BLANC - between non-use and fraud
Rennes court of Appeal, October 6, 2020, decision N°12/05278
The French firm MONT BLANC established in the food industry is well-known for its creamy-desserts, and is notably the trademark owner of the French brand MONT BLANC, registered for several products and services in classes 5; 29 ; 30 ; 31 ; 32 ; 33 ; 35 ; 42 ; 43 ; 44 and 45. This brand can be seen as a tactical barrage trademark considering it was registered for several classes for products and services that represent no immediate interest but solely intended to enable the trademark to occupy the register and facilitate initiating oppositions against goods identical to those registered. This trademark was however subjected to an obligation to use since it had been registered for more than 5 years.
The third-party firm UNIPAK has filed an international trademark designating France , for “alcoholic beverages, namely vodka” in class 33.
The firm MONT BLANC thus opposed this trademark registration, based on the anteriority of its own trademark registered for identical and similar products in classes 32 and 33.
Since no proof of use was requested, the opposition has been deemed justified and the trademark registration rejected.
UNIPAK contested this decision, and meanwhile initiated a procedure to request the partial cancellation of the MONT BLANC trademark for lack of use in regards to products in classes 32 and 33. The goal here was to void the INPI’s opposition decision, which rejected the registration of the .
MONT BLANC, in defense and as a counterclaim, applied for a declaration of invalidity and prohibition of use of the trademark for the disputed goods.
- As regards the cancellation action for lack of use, since MONT BLANC could not justify the use of its trademark in classes 32 and 33, it was found to be justified and the trademark was cancelled for these goods.
We note that the latter attempted to put forward fair reasons for this lack of use, namely the preservation of "its notoriety and its brand image, namely a company producing and marketing products essentially intended for children and adolescents" which was not compatible with the sale of alcoholic products.
In so far as the proper reasons for non-use must result from obstacles beyond the control of the trademark owner, that justification was not accepted.
As regards the counterclaim seeking, to have the trademark cancelled and to prohibit the use of the sign or terms MONT BLANC for "alcoholic beverages, namely vodka" on French territory:
- the Court of Appeal was unable to rule on the validity of his trade mark because the application is still pending before the INPI,
- but on the other hand ruled to prohibit its use.
Indeed, it had been considered that if UNIPAK were to be authorized to market alcoholic beverages in France under the "MONT BLANC" trademark, this would contribute to the popularization of such products under that name, with the risk that this trade mark would gradually be assimilated in the minds of consumers to alcoholic beverages. Consequently and in order to combat and prevent alcoholism, MONTBLANC would itself be forced to submit to the advertising restrictions provided for by law, even if it only marketed dairy products, thus creating an obstacle to the free circulation of the first trademark.
LAVOIX's opinion: This decision highlights a switch that is not often used in trademark litigation, namely preventing the use of a trademark, or more broadly of an expression even when it is not possible to obtain the cancellation of a trademark.