Practice head:

Claude-Étienne Armingaud

Key clients

  • Kookai
  • Hyundai Motor Company
  • Nouvel Héritage
  • Nous – Concept Store
  • POC
  • Ravel Technology
  • AR24
  • Cybergun
  • Canal+

Work highlights

  • Assisted POC Sports with identifying and destroying counterfeit products seized by Belgian customs and implementing a successful process of customs enforcement of trade marks and intellectual property rights.
  • Representing Nous Concept in the defence of its trade marks in the context of litigation and subsequent trade mark fillings.
  • Assisting Jessy Séminor, a French start-up specialising in interior design, with various aspects pertaining to the development of its activities and the protection of its intangible assets and goodwill.

Source: Legal 500 – EMEA

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K&L Gates ranked “Highly Recommended” with Claude-Etienne Armingaud.

Source: Leaders League

K&L Gates ranked with Claude-Etienne Armingaud.

Source: Leaders League

Further to the adoption of the so-called Trademark Package at European level, comprised of Regulation no.2015/2424 (as codified by Regulation no.2017/1001 dated 14 June 2017) on EU Trademarks (the “Regulation”) and Directive no.2015/2436, harmonizing Member States’ trademark regime (the “Directive”), both dated 16 December 2015, France was due to update its internal regulatory framework.

The PACTE Act no. 2019-486, adopted on 22 May 2019, implemented the Trademark Package at long last. While the Regulation addressed EU aspects and is of direct enforcement within Member States, the Directive provided Member States with some leverage on the internal implementation.

These new aspects aim at simplifying the enforcement of intellectual property rights (“IPR”), for both trademarks and the patents, by creating administrative procedures, rather than having to introduce a judicial action before the courts.

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The European Union Court of Justice confirmed the intellectual property rights owned by the French company “Forge de Laguiole”, but solely in areas in which it pursued an actual business activity.

A decision (Judgement dated 5 April 2017 of the Second Chamber of the EU Court of Justice, No C-598/14Szajner”) dated 5 April 2017 of the European Union Court of Justice (“EUCJ”) put an end to the longstanding series of court decisions about the Laguiole trademark before the European Union jurisdictions (“EU Jurisdictions”), on which relied the right for French company “Forge de Laguiole” to keep using its business name. This decision also gave the EUCJ the opportunity to clarify the application of national case law by the EU Jurisdictions within the framework of proceedings based on Article 8 (4) of Council Regulation (EC) No 207/2009 dated 26 February 2009 on the Community trade mark (the “Regulation”).

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As stated in a previous article published in the Trademark and Unfair Competition Bulletin1)“FR – Creation of a new industrial property right in France : « The Geographical indication of industrial and handicraft products »”, … Continue reading, the Act no. 2014–344 on consumer protection, named “Hamon Act” and dated March 17, 2014, created a new industrial property right: the “Geographical Indications protecting Industrial Products and Crafts” (or “Indications Géographiques protégeant les Produits Industriels et Artisanaux”, hereinater, “IGPIA”) in order to include industrial and handicraft products in the scope of the protection of geographical indications.

In the same article, the authors highlighted the fact that prior to the implementation of the aforementioned provision, there was a lack of protection since a third party could use the name of a famous place or city and register it as a trademark to misleadingly sell handicraft products under that name.

Introduction to the Laguiole case

A famous example was the “Laguiole cutlery” case where a third party, among others, was using the famous French city name of “Laguiole” as a trademark to flood the market with knives made in China under that brand. Following the scandal that ensued, the Laguiole municipality launched an action against several companies and legal persons that had registered 27 trademarks in total, on the ground that such use of “Laguiole” was deceptive.

Indeed, the trademark “Laguiole” had been filled in almost all trademarks’ classes and therefore the Laguiole municipality was prevented from using such trademark for its own activities, and in particular for its renowned cheese and cutlery.

After a first instance ruling, the Paris Court of Appeal rejected the Laguiole municipality’s action in 2014 which was subsequently presented to the French Supreme Court (“Cour de cassation”).

The Cour de cassation ruling
By a ruling dated 4 October 2016, the Cour de cassation overturned parts of the ruling of the Court of Appeal and welcomed the argumentation of the Laguiole municipality.

Indeed, the Cour de cassation considered that the use of the “Laguiole” trademark by the defendants was misleading and confusing to consumers since the products sold under that trademark were not manufactured in such place.

In addition to such argument based on consumer protection laws, several arguments grounded on trademark law were also favorably received by the Cour de cassation. However, as such Court only has jurisdiction over legal qualification but not on facts, the end of this saga will be written by the Court of Appeal to which the case has been remanded to for the final ruling.

This Court of Appeal will hopefully close the ongoing debate. However, such Court of Appeal may also side with the initial Court of Appeal ruling. In such a case, the Cour de cassation may have to hear the case again.

Nevertheless, such litigation intervenes in a context where IGPIA have effectively become protected. Even if Laguiole was not among the five applications filed for IGPIA in France (out of which only one has been granted so far), the broad power given to geographical indications with the adoption of the European Regulation No 2015/2424 amending the Community Trade Mark Regulation and the European Directive No 2015/2436 approximating the laws of the Member States relating to trade marks may have an impact on players’ practices.

Indeed, according to these Regulations, the national right granted on geographical indications through IGPIA or otherwise conferred by the courts, may materialize a ground for refusal for not only trademarks applications but also European trademarks. There is thus a strong incentive to seek this protection by any means necessary.

In collaboration with Clémence Marolla.

First publication in the K&L Gates Trademarks & Unfair Competition Bulletin, 1/2017 – Avril 2017

References

1 “FR – Creation of a new industrial property right in France : « The Geographical indication of industrial and handicraft products »”, Olivia Roche and Claude-Etienne Armingaud, TM and Unfair Competition Bulletin, no. 2/2014 (14)

In view of the strong international dimension, notably European, of commercial issues related to trademarks, the economic players do not limit the scope of their protection to one single national territory anymore. On the contrary, the current trend is to multiply of the trademarks filings, which often leads to a variety of protections, for a same sign, through a national trademark, a European Union (EU) trademark and an international trademark.

However, in France, the jurisdiction of the courts varies depending upon these different titles, and thus requires, prior to introducing an action, adopting an actual procedural strategy. The Commercial Division of the French Supreme Court, in a decision dated 6 September, 2016 1) Commercial Division of the French Supreme Court, 6 September 2016, No.15-29.113 , confirmed these strategical issues relating to the choice of the forum election. Indeed, according to this decision, limiting the scope of a proceeding to French trademarks becomes a real advantage (1.), which could lead, in fine, to a new equilibrium for trademark litigation in France (2.)
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References

1 Commercial Division of the French Supreme Court, 6 September 2016, No.15-29.113

The new generic top-level domain (gTLD) .africa, a regional domain for users located in and out of the continent, has been officially validated by ICANN.

More than a decade after its other regional counterparts, such as .eu or .asia, the .africa gTLD has been the subject matter of a legal conundrum for years.
The new generic top-level domain (gTLD) .africa, a regional domain for users located in and out of the continent, has been officially validated by ICANN.

More than a decade after its other regional counterparts, such as .eu or .asia, the .africa gTLD has been the subject matter of a legal conundrum for years.
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The earlier is the owner of the French and Community semi-figurative trademark “vente-privee.com”, underlined with a pink line drawn in diagonal, enriched by two pink butterflies.

The latter is the owner of the French trademark “showroomprive.com” and expected the registration of a community semi-figurative trademark “showroomprive.com” enhanced with some stylized and coloured elements.

However, on August 1, 2012, the Office for the Harmonisation of the Internal Market (herein, “OHIM“) refused such application for “SHOWROOMPRIVE.COM” on the ground that the trademark was not distinctive enough and, much to the contrary, was descriptive for the targeted goods and services.

At the same time, on September 5, 2012, Showroomprive.com assigned before the Paris first instance Court, its competitor, Vente-privee.com, in order to invalidate the “vente-privee.com” trademark for lack of distinctiveness. This trademark had been registered since October 14, 2004 without any complains from ShowroomPrive.com or any other third party.

The first instance Court welcomed Showroomprive.com’s request and decided that “the terms ‘venteprivee.com’ was, at the time of the application date, descriptive of the company’s business activity for every consumer wishing to buy online discounted products; and thus such use was necessary to designate its private sales activity.” In addition, the Paris Court highlighted that the trademark had not acquired any “distinctiveness through its use, thus enabling the term to take ownership of generic names, when such names must remain available for all the economic actors from a given sector.

Meanwhile, on December 6t, 2013, in another law suit, Vente-privee.com assigned the owner of similar domain names (namely vente-priveee.com, ventprivee.com, venteprives.com) on the basis of its cybersquatting activities. The French first instance Court highlighted that the semi-figurative “vente-privée.com” trademark had to be considered as a well-known trademark. Indeed, in this case, the Court decided that the “vente-privée.com” trademark had a strong reputation due to the fact that a significant part of the relevant public made a connection between the trademark and its associated goods and services.

In conclusion, the decision concerning the semi-figurative trademark should not affect the word trademark “SHOWROOMPRIVE.COM” registered in 2007 by the OHIM. Nevertheless, we can legally wonder about the consequences in case of further contestation regarding a word mark and a close watch should be kept on any follow up evolution.

First published in K&L Gates Trade marks and unfair competition Bulletin no. 1/2014 (PDF) in collaboration with Alexandra Bernard.