LAGUIOLE: THE END OF A LONG PROCEDURE?
On 21 October 2014, the General Court of the European Union made a much anticipated decision in a case opposing the company FORGE LAGUIOLE, headquartered at Laguiole (France), and Mr Szajner, residing in Niort (France).
The history of this case can be briefly summarised as follows:
- On 20 November 2001, Mr Szajner filed the application for registration of the trade mark LAGUIOLE.
- On 17 January 2005, the OHIM registered the trade mark LAGUIOLE in Classes 8, 14, 16, 18, 20, 21, 28, 34 and 38.
- On 22 July 2005, an application for the declaration of partial invalidity of the Community trade mark LAGUIOLE was filed by Forge Laguiole on the grounds of its earlier corporate name.
- On 27 November 2006, the cancellation division of the OHIM dismissed the application for invalidity.
- Forge Laguiole appealed this decision.
- On 1 June 2011, the Board of Appeal of the OHIM partly annulled the application for registration of the trade mark LAGUIOLE for all Classes with the exception of Class 38.
Mr Szajner filed an appeal before the Court.
The Court referred to a judgement of the French Court of Cassation on 10 July 2012, according to which: “the corporate name was only protected for the activities actually carried out by the company and not for those listed in its by-laws”. (C. cass Ch. Com., Coeur Princesse / Mattel France, n ° 08 to 2012,010).
Although the Court considered that LAGUIOLE is a “descriptive or generic [term] for Forge Laguiole’s activity”, it drew attention to the fact that the descriptive element may be the dominant element even if its distinctiveness is reduced.
The Court therefore held that “the signs present a certain high-level visual, phonetic and conceptual similarity”.
Moreover, the Court considered that there was a risk of confusion since the relevant public may believe that the contested products are of the same origin as FORGE LAGUIOLE’s products.
The contested registration application was annulled with respect in particular to the following Class 8 products: “manual tools and instruments (used manually); spoons: saws; screwdrivers; shears; sickles; manual tools and gardening tools (used manually); rakes; shovels; picks; pliers; hammers; sharpening stones; lawnmowers (hand-held); parasite killing equipment for plants; insecticide sprayers; mechanical tools for chopping or cutting food; manual tin openers; razors; razor blades; shaving cases; nail files and nail clippers, nail scissors; manicure; electric or non-electric hair clippers; electric or non-electric hair removing devices; tweezers”.
This decision was considered significant for FORGE LAGUIOLE. Indeed, on the grounds of both the judgement and its corporate name, FORGE LAGUIOLE could oppose third parties using or filing the word LAGUIOLE alone. However, the Court clearly stated that LAGUIOLE is a descriptive term applied to cutlery. Therefore, if the term LAGUIOLE were used and/or filed by a third party in association with another term, the result would probably not be the same.
Finally, this is a decision of the General Court of the European Union and could still be appealed. It is worth recalling that a few months earlier in France, in the judgement of the Court of Appeal of Paris on 4 April 2014 opposing the town of Laguiole and another party which did not reside in Laguiole, Laguiole was held to be a common, generic term for a knife. The Court dismissed the town of Laguiole’s appeal against the name Laguiole for a knife which did not come from Laguiole.
Contact : Béatrice DAUBIN
Publication date : December 2014
- Publication date: 12月 2015
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