Cour de Cassation, Commercial Chamber, 31 January 2024 – Decision No. 22-20.293
On 31 January 2024, the Cour de Cassation handed down a ruling on the protection of trademarks with a reputation.
Apple Corps Limited is the owner of a European Union trade mark “BEATLES” for a number of goods and services, including “sound discs”, for which it enjoys a particularly high reputation.
An individual applies to register “THE BEATLES” for a number of goods and services.
The opposition was rejected, as the Director General of the INPI considered that in the absence of any demonstrated similarity between the goods and services at issue, there could be no infringement of the repute of the earlier trademark.
This reasoning was endorsed by the Court of Appeals (Paris Court of Appeals, 15 April 2022, RG no. 21/09159), which ruled that :
The Director General of the INPI is not wrong to have applied the principle of speciality and consequently to have disregarded the extended protection conferred on the reputed trademark.
However, the same solution has not been adopted by the Cour de cassation.
In its decision of 31 January 2024, the Cour de cassation overturned the appeal ruling, holding that :
In so ruling, without investigating, as it was required to do, whether, notwithstanding the difference in the goods and services in question, the relevant public was not led, in view of the strength of the reputation of the trade mark ‘Beatles’ to designate ‘sound discs’, its high degree of distinctiveness and the strong similarity of the signs in question, or any other element that it deemed appropriate, to make a link between this prior mark and the later mark « The Beatles » for at least some of the goods and services for which it has been filed, the Court of Appeals therefore failed to provide a legal basis for its decision.
The Cour de Cassation gives priority to the requirement of a link between the earlier reputed trademark and the later trademark. It set aside the criterion of similarity between the goods and services in question.
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