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.)

1. The limitation of the scope of the national proceedings to French trademarks: a new procedural advantage?

Under Article L. 716-3 of the French Intellectual Property Code ²⁾ Resulting from the French Act No.2011-525 of 17 May 2011(“FIPC”) and Article D. 211-6 of the French Code of Judicial Organization, trademark-based civil actions and claims (as well as the related unfair competition actions) must be initiated before one of the ten appointed High Courts (“tribunaux de grande instance“), including the High Court of Lille, which is exclusively competent for the actions within the northernmost area of France.

In addition, the combination of Articles L.717-4, R.717-11 of the FIPC and Article R. 211-7 of the French Code of Judicial Organization provides for the exclusive jurisdiction of the High Court of Paris for any action involving EU trademarks. Therefore, any litigation which may impact the validity and/or the scope of an EU trademark should be referred to the High Court of Paris.

To determine the competent court, it is necessary, under Article 4 of the French Code of Civil Procedure, to determine whether the litigation subject matter, resulting from the respective claims of each party involves EU trademarks.

The aforementioned case between two French companies, Compagnie Gervais Danone (“Gervais Danone”) and Dagniaux (“Dagniaux”), illustrates that the definition of the litigation subject matter may be tricky and implies strategical issues with regard to the jurisdictional competence.

Indeed, Gervais Danone owned identical French, EU and international trademarks protecting the “Danio” sign. According to Dagniaux, this sign infringed upon its prior rights on several French and EU trademarks such as “glacier Dagniaux depuis 1923” or “depuis 1923 Dagniaux artisan glacier”. Consequently, Dagniaux sued Gervais Danone before the High Court of Lille for trademark infringement and demanded the invalidity of the French Danio trademarks, as well as other interdiction measures.

The introduction of the case before the High Court of Lille appeared coherent in view of the matter of the litigation limited to French trademarks owned by both parties It was however challenged by Gervais Danone which argued that, since both French and EU trademarks were absolutely identical, any decision against the French trademarks would, de facto, substantially impact the EU trademarks.

Nevertheless, the French Supreme Court rejected this analysis and, instead, approved Dagniaux’s reasoning, by underlying notably that “the provisions stating the exclusive jurisdiction of the Paris High Court for the actions relating to EU trademarks must be strictly interpreted” and that in the present case “the subject matter of the proceeding relates to the rights owned by the parties on French trademarks exclusively”.

Therefore, the French Supreme Court confirmed the analysis made by the Court of Appeal of Douai³⁾Appeal Court of Douai, December 10, 2015 , No. 15-29113, according to which, the fact that Gervais Danone owned EU and international trademarks identical to the French trademarks at stake, had no impact on the jurisdiction of High Court of Lille, since those non-French trademarks were not targeted by Dagniaux’s claims.

2. A decision favoring more balanced trademarks litigations but unfavorable to the unitary nature of the EU trademark

The visible trend of multiplying national, EU and international trademarks filings to protect a unique sign leads trademark owners, when they initiate a proceeding, to include all these titles. This approach is probably justified by the desire to preserve a uniform protection for a same sign under various titles. As the national territory is included within the territory already covered by the EU trademarks this approach would seem logical. This strategy also follows the principle of the unitary protection offered by EU trademarks.

Nevertheless, the multiplication of these proceedings targeting both French and EU trademarks also leads to the concentration of the majority of trademark litigations before the High Court of Paris, at the expense of the other nine French jurisdictions competent for trademark issues. The French Supreme Court decision may limit this trend. Indeed, the adoption, by the French Supreme Court, of a contrary position might have led to the concentration, not only of the proceedings expressly relating to EU trademarks, but also to the proceedings against French trademarks whose owner could have also had identical EU trademarks (regardless of their inclusion in the proceedings), before the Parisian jurisdiction.

In addition, an adverse decision of the French Supreme Court could also have led the plaintiffs to systematically include, into any proceeding they initiate, any and all identical trademarks (i.e. national, EU and international) owned by the same person. As a consequence, such reasoning could have seriously challenged the trademark litigation as we know it. Indeed, for instance, it could have mandated Dagniaux to also file an application for declaration of invalidity of Gervais Danone’s EU trademarks before the EUIPO (“European Union Intellectual Property Office“), which has exclusive jurisdiction on this matter⁴⁾Article 52 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark, as amended by Regulation (EU) 2015/2424 of the … Continue reading. Therefore, the procedural strategy consisting in targeting French trademarks only, as confirmed by the French Supreme Court, is certainly time-and-costs-efficient for the plaintiffs.

Consequently, the French Supreme Court decision appears to favor a more balanced and accessible trademark litigation system. However, this decision may also lead to uncertain practical impacts and is undoubtedly a severe blow to unitary character of the EU trademark protection. Indeed, if Gervais Danone’s French trademarks are definitely judged invalid, the French company may end up owning EU trademarks, whose use may be prohibited on the French territory.

In collaboration with Olivia Roche.

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