This article shall examine the recent judgment of the European Court of Justice (ECJ) regarding the registration of trade marks which may generate confusion among consumers and the sector of the business activity of the companies who have registered said trade marks.
The matter revolves around a specific EU trade mark “LAGUIOLE” registered for numerous products and services. Said application was granted by the EUIPO (European Union Intellectual Property Office) in 2005.
The French company FORGE DE LAGUIOLE, well known for the manufacture and sale of its products in certain sectors, such as knives, cutlery and similar products, requested the cancellation of the trade mark “LAGUIOLE”. FORGE DE LAGUIOLE alleged that its corporate name does not just have a mere local reach, and that in accordance with French law, the company is entitled to claim the prohibition of the use of a more recent trade mark.
In 2011, the EUIPO, allowed the claim filed by FORGE DE LAGUIOLE against the trade mark application “LAGUIOLE” given the risk of confusion existing between the corporate name of said company and the trade mark “LAGUIOLE”. However, the owner of the trade mark, an individual, filed an appeal before the General Court of the European Union (“General Court”) in order to annul the decision of the EUIPO.
The General Court partially annulled the EUIPO’s decision, establishing that it was only cancelling the trade mark “LAGUIOLE” for the commercialisation of products in the sector of knives, cutlery and similar products, that is to say the scope of the activity of FORGE DE LAGUIOLE. Therefore, it granted the registration of the trade mark “LAGUIOLE” for other products and services outside of said scope.
The EUIPO itself, supported by FORGE DE LAGUIOLE, unsatisfied by the decision of the General Court, filed an appeal against the ECJ.
The ECJ pointed out that, in assessing the protection granted to the corporate name of a company under the national law of a member state, the General Court must apply the rules of national law as interpreted by the national courts at the time at which the judgment is given. Therefore, it must also be able to take into consideration a resolution originating from a national court (in this case judgment of the French appeal court – Cour de cassation- of 12th July 2012) issued subsequent to the resolution of the EUIPO.
The ECJ thus considers that the General Court rightly concluded that, in accordance with applicable French legislation, the protection that may be invoked by FORGE DE LAGUIOLE as a consequence of its corporate name is only valid for the activities effectively carried out by said company.
The problem with the judgment issued by the General Court is that it did not explicitly mention the criteria by which the activities effectively carried out by FORGE DE LAGUIOLE had to be determined. However, it did expressly take into account, upon the examination of said activities, the use, clientele at which its activities are directed and distribution channels, and therefore, it correctly determined the activities effectively carried out by FORGE DE LAGUIOLE.
Consequently, it is correct that the cancellation of the trade mark “LAGUIOLE” is limited to the products included in these activities or sectors.
To conclude, the ECJ, indicates in its judgment that, according to the implementation Regulation, it is up to the applicant of the annulation to provide proof that their national law has elements which demonstrate the faculty, pursuant to the applicable national law, to enforce a prior right, as protected in the national legal framework.
Hugo Ester
Vilá Abogados
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1st of September 2017
