The 3D Pen is Mightier

January 22nd, 2016 | Posted by Claude-Etienne Armingaud in Intellectual Property | Trademarks - (0 Comments)

The BIC company registered the shape of its renowned pens as a tri-dimensional Community trademark in 1997.

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“Je Suis Paris” – Trademark Refusal on the Ground of Politics

January 22nd, 2016 | Posted by Claude-Etienne Armingaud in Intellectual Property | Trademarks - (0 Comments)

Following the November ’15 terror attacks in Paris, the French Trademark Office (“INPI”) received and subsequently
rejected numerous attempts of registration of the signs “Pray For Paris” and “Je Suis Paris” (“I am Paris”).
The refusals were justified on the ground that “these signs consisted in terms which may not be monopolized by an
economic actor due to their use and perception by the collectivity”.

This position differed from the one expressed after the January 7, 2015 attacks against Charlie Hebdo, where the attempts to register “Je Suis Charlie” (“I Am Charlie”) had been refused on public order grounds. Further to Articles L711-1 and L711-3 of the French Intellectual Property Code, a sign has to be distinctive, available and lawful to be registered. The INPI Director’s decision dated November 20, 2015 retained the unlawfulness of the applied signs, considering their perception by the public.

From a European point of view, such refusal could also be admitted on the ground of Article 7.1.f of the Community
Trademark Regulation. However, if the French decision appears politically appropriate, its basis may be seen as legally weak. Indeed, the words themselves are not unlawful, while their relations to terrorist attacks, and the intent to market on such events, could be interpreted as an offense to public order.

The INPI based its interpretation on the very nature of the trademark, which is “to distinguish goods and services”
without confusion as to their origins, as per Article L711-1 of the French Intellectual Property Code.

In the meantime, “Pray For Paris” and “#PrayForParis” have been respectively registered in the UK in 2013 (and
consequently without pre-existing relation to the November ’15 events) and applied for in Germany the day following the event.

It remains to be seen if a common European position emerges from the tragedy.

First publication: K&L Gates Trademark and Unfair Competition Bulletin, 01/2016 with Audrey Decima

Swatch (WIPO no. 506 123) / Ice Watch (WIPO no. 1 029 087) – Second Time Comes the Charm?

January 22nd, 2016 | Posted by Claude-Etienne Armingaud in Intellectual Property | Trademarks - (0 Comments)

On October 6 2015, the Commercial Division of the French Supreme Court (“Cour de Cassation”) confirmed the refusal of Paris Court of Appeal to register the “Ice Watch” trade mark. This decision follows the 2008 co-existence agreement concluded between the respective owners of the “Swatch” trademark and the “Ice Watch” business

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The two leading French online private sellers, Vente-privee.com and Showroomprive.com, opened fire against each other with regards to protection of their respective trademarks.

April 15th, 2014 | Posted by Claude-Etienne Armingaud in Case Law | eCommerce | Europe | France | Trademarks - (0 Comments)

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.

The Art of Photography – When Justice breaks out of a cliche

February 20th, 2013 | Posted by Claude-Etienne Armingaud in Case Law | France | Photography | Social Networks - (0 Comments)

Of the difficulty to frame photograph as a protected work and its consequences on social network.

On December 18, 2012, further to its acquisition by Facebook, Instagram unveiled its new terms of use, to be enforced on January 16, 2013. At the case of the redrafting of the contract tying the social network to it, users stood much-discussed undertaking which allowed the company to monetize its users’ photographs, notably for commercial and advertising purposes. Facing a major uproar from internet users Instagram elected to withdraw this provision and apologized fondly. However, such withdrawal only targeted the cancellation of clear terms of what the terms of use provided from the very beginning: the grant by the users to Instagram of the right to use the photographs uploaded on its platform.

Two days later, the courts of Paris rendered a judgment (TGI Paris, 3ème chambre, 4ème section, Jugement du 20 décembre 2012 – Philippe G, Alexandra J c./ Paul M. (in French)) which may jeopardize the grievances of the social network users. Indeed, the judges refused to recognize that the airplane photographs take by individuals bore sufficient originality to allow any protection under French intellectual property law.

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