SUMMARY OF JURISPRUDENCE
The case of a purchase made by a law-firm’s intern for the purposes of an ascertainment of buying
French Suprem Court (Cour de Cassation) – 1st Chambre civile – January, 25 2017, appeal n°15-25210, G-Star Raw v. H&M Hennes & Mauritz
The fashion firm G STAR RAW deemed that the H&M HENNES & MAURITZ company sold counterfeiting products, therefore realized an ascertainment of buying in order to prove their allegations.
The bailiff in charge of buying those products was assisted by an intern from G STAR RAW lawyer office.
Further to the bailiff report G STAR RAW sued H&M for counterfeiting products and unfair competition and parasite liability. H&M decided to argue that this report was void, due to the intern’s participation, which constituted an infringement the right to a fair trial, the principle of equality of arms and the rights of defense.
The Cour d’Appel of Paris, seized, decided that the presence of the intern didn’t invalidate the bailiff report because none unfair ploy to proceed to the buying operation has been proven; hence trial’s leading principles were intact.
Contrariwise, the Cour de Cassation decided that the intern had to be deemed as a lawyer. The bailiff report should be left aside if he was made “with the active assistance of a counsel of G STAR RAW CV, the same firm which required the report”, thus violating the principle of loyalty in the administration of the evidence.
This decision enlarges the list of unauthorized person to enter a shop during an ascertainment of buying without the judge approval. Indeed, nor a bailiff or his employees, nor the lawyer or his intern can do so.
This decision will obliged to use a seizure for counterfeiting in order to protect evidences from invalidating hammer, or call a perfectly neutral party to the case.
The assessment of the moment to take into consideration regarding the acquisition of the distinctive character of a mark in an invalidity action
French Suprem Court (Cour de Cassation) – Chambre commerciale – December 6, 2016, appeal n°15-19048, SHOWROOMPRIVE v. VENTE-PRIVEE.COM
The company VENTE-PRIVEE.COM, specialized in the online sale of de-stocked products, is the owner of numerous brands including the French word mark vente-privee.com filed on January 16, 2009.
On 5 September 2012, SHOWROOMPRIVE, which is active in the same field of activity, assigns the above-mentioned mark for lack of distinctive character in an invalidity action.
In front of the Cour de Cassation, SHOWROOMPRIVE has two main complaints:
- The date to be taken into consideration for the establishment of the distinctive character;
- The elements of proof accepted for such purpose
On the first complaint, the Cour de Cassation reminds that France used the possibility offered by the European Directive 2008/95 enabling it to assess the acquisition of the distinctive character of a mark both before and after its registration. In this regard the Court states that the opposing party cannot therefore rely on a decision of the ECJ relating to a dispute arising in the territory of a Member State which had not made use of that possibility and for which the assessment of the acquisition of distinctive character must take place before the trademark registration.
In this sense, the Court held that:
- The moment to take into consideration regarding the acquisition of the distinctive character should be on the date on which the judge rules
- All the evidence relating to the acquisition of the distinctive character should be taken into account and it does not matter whether they are prior or subsequent to the registration of the mark.
On the second complaint, the Cour de Cassation considers that the information submitted by the company VENTE-PRIVEE.COM, namely the affixing of the words “price by vente-privé.com” alongside the products offered for sale, the use in e-mails for informing customers of incoming sales, presentation of services in the press and oral citation in the media made it possible to demonstrate a use as a trademark of the contested mark with regard to "sales promotion services on behalf of third parties, presentation of products on any means of communication for retail purposes and services for the collection of goods and services on behalf of third parties, in particular on a merchant Website ".
That decision shows that in the context of an invalidity action for lack of distinctive character, the rules governing the assessment of its acquisition are likely to vary from one country to another, thus making the outcome of the dispute totally different
Can the use of an individual mark as a label of quality constitute, in relation to the goods for which it is used, use as a trade mark?
Court of Justice of the European Union, December 1st, 2016, Opinion of the advocate general WHATELET, case C-689/15, GOZZE FROTTIERWEBEREI GmbH v. VEREIN BREMER BAUMWOLLBORSE (VBB)
VBB, a company specialized in cotton business, owned a European trade mark registered, among other, for textile products. This company enter into licensing agreement allowing use of this label only for products made of high quality cotton.
GOZZE Company is also a part of textile products industry. Even if GOZZE isn’t certified by VBB, it uses this tag on its cotton towel:
VBB Company bring GOZZE in front of the relevant German court. GOZZE set off a counterclaim, and ask for an invalidity of the community trade mark. The defendant argues that this trademark is not distinctive enough and do not comply with the function of indication of origin.
The Court considers that this symbol of cotton flower may be perceived by the public either as an indication of the quality of the products and therefore does not fulfil its function as an indication of origin or as a collective mark in which the public associates the mark in question with a quality control carried out by the proprietor.
In those circumstances, the Court decided to suspend the proceedings and to refer to the CJEU for a preliminary ruling:
- Can the use of an individual mark as a label of quality constitute, in relation to the goods for which it is used, use as a trade mark?
The general advocate considers: “In the light of the foregoing considerations, I consider that the use of a sign, as a label of quality, is capable of constituting use as a trade mark such as to preserve the rights of its proprietor as conferred on him by the EU trade mark […], provided that the use of the sign simultaneously fulfils a trade mark’s essential function of indicating origin”.
- In such a case, is such a mark to be declared invalid, or to be revoked, if the proprietor of the mark fails to ensure that expectations in trade relating to the quality associated with the sign are being met by carrying out periodic quality controls at its licensees?
The general advocate considers: “a label of quality must necessarily — and exclusively — fulfil a trade mark’s function of indicating origin”.
The possibility of operating quality controls of the goods bearing the mark in question in order to link the product to a manufacturer and to the firms which are economically related to, is offered to the trade mark proprietor. However, the Advocate General considers that “there is no requirement that such controls actually be carried out” and that “what matters is not whether controls are in fact in place, but rather whether the quality of the goods may be ascribed to a specific undertaking and the possibility of controls associated with that undertaking”.
In the light of the foregoing, a ''label'' mark cannot therefore be revoked solely for lack of quality control of the products associated with it.
The Opinion of Advocate General Wathelet therefore sets out the legal outlines of so-called 'label' marks which are subject to the same requirements as those which we could classify as conventional.