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-598/14 “Szajner”) 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”).
1. The “Laguiole legal saga” before the EU Jurisdictions
The French company “Forge de Laguiole” is internationally renown for its manufacturing of knives and cutlery.
In 2001, Mr Gilbert Szajner, a French individual, applied for the registration of the European Union trademark “LAGUIOLE” (the “Trademark”) before the European Union Intellectual Property Office (“EUIPO”). This Trademark was registered in 2005 and covered a broad spectrum of goods and services, including knives and cutlery.
Subsequently, Forge de Laguiole sought the cancellation of the Trademark before the EUIPO on the basis of its prior business name, which is of more than “merely local significance” and could as such entitle Forge de Laguiole to prohibit the use of a subsequent trademark, on the ground of Article 8(4) of the Regulation.
In 20111) Decision dated 1 June 2011 of the First Board of Appeal of the EUIPO (Case R 181/2007-1), the First Board of Appeal of the EUIPO declared the Trademark partially invalid in view of the likelihood of confusion with the business name of the French company. The Trademark had therefore been cancelled for all the goods and services it covered, except for the telecommunication services in class 38.
Mr Szajner sought to overturn the EUIPO’s decision before the General Court of the European Union (the “General Court”).
By Judgment of the General Court of 21 October 2014 (Szajner v OHIM – Forge de Laguiole (LAGUIOLE), T-453/11, EU :T : 2014 :301), the General Court confirmed the cancellation of the Trademark but only for goods and services related to the business activities actually pursued by Forge de Laguiole. Contrary to the EUIPO, the General Court maintained the Trademark for the all other goods and services. Considering that the judgement of the General Court infringed, inter alia, Article 65 (2) of the Regulation, the EUIPO, supported by Forge de Laguiole, brought an appeal before the Court of Justice.
Nevertheless, by judgement dated 5 April 2017, the Court of Justice confirmed the decision of the General Court. Indeed, the Court of Justice considered that the General Court was correct in finding that, under the applicable French law, the protection granted to Forge de Laguiole on the basis of its business name solely covers the business activities it actually pursued.
2. The application of national case law by EU Jurisdictions in application of the Regulation
The first ground of appeal of the EUIPO related to the application by the General Court of the Judgement dated July 2012 of the French Cour de Cassation (No 08-2012.010, the “2012 French Judgement” [source in French]), despite the fact it occurred after the actual decision of the Board of Appeal.
Indeed, under Article 8(4) of the Regulation, the proprietor of a non-registered trademark, or of another sign, used in the course of trade of more than mere local significance, may oppose a subsequent trademark, in application of EU legislation or of the law of the member state governing that prior sign.
Article L.711-4 of the French Intellectual Property Code (“FIPC”) provides that “a sign may not be adopted as a trade mark if it interferes with prior rights, in particular […] (b) a business name or corporate name, if there is a likelihood of confusion by the public”.
Therefore, the First Board of Appeal of the EUIPO had to assess the Laguiole case in light of the French courts’ interpretation of such Article L.711-4 of the FIPC. Consequently, in its decision dated 1 June 2011, the Board of Appeal considered that, under applicable French case law, the protection granted to a business name covers all of the business activities pursued by the company.
Indeed, as of the date of the decision, the case law of the French courts was governed by the judgement of the Court de Cassation, dated 21 May 1996 (No 94-16531 ). In this decision, the Court de Cassation, in a similar context of an action introduced by the owner of a business name seeking to prohibit the use of a subsequent trademark, did not take into consideration the actual scope of business activities pursued by the plaintiff.
However, in the 2012 French Judgment, the French Court de Cassation adopted a different approach and held that business names were protected only for those of the business activities which were actually pursued by the plaintiff. According to the General Court, it did not matter that this judgement has been delivered further to the EUIPO’s decision, since it clarified a disputed legal issue.
The Court of Justice, in the judgment dated 5 April 2017, confirmed this analysis.
Indeed, the Court of Justice indicated that, under Article 65 (1) and (2) of the Regulation, the General Court had to conduct a full review of the legality of the EUIPO assessment2) In reference to judgement dated 27 March 2014, OHIM v National Lottery Commission, C-30/12 P, EU:C: 2014:186, paragraphs 36 to 38. Therefore, it was justified for the General Court to take into account the most recent French case law and, especially, the 2012 French Judgment. In addition, the Court of Justice underlined that the parties to this proceeding had had the opportunity to submit observations on the 2012 French Judgement before the General Court after the start of procedure but before the General Court’s decision.
Consequently, the Court of Justice held that the fact that the General Court based its decision on the ground of a judgement issued after the EUIPO’s decision did not constitute a breach of the aforementioned Article 65.
The Court of Justice held that the General Court had to apply the then-current interpretation of the rules of national law by the national courts at the date it rendered its decision. It thus had to take into consideration a decision originating from a national court, even if posterior to the initial decision of the Board of Appeal of EUIPO.
As a consequence, the Court of Justice confirmed the application of the 2012 French Judgement to the EU Laguiole Case and the cancellation of the Trademark for goods and services related to the business activity actually pursued by Forge de Laguiole, i.e. mainly knives and cutlery.
First published in K&L Gates Trademark and Unfair Competition Bulletin – 02/2017 – July 2017 – with Olivia Roche.