MONDAY, 8 NOVEMBER 2010
France: fraudulent trade mark filing
When the manager of a company files a trade mark application identical to the name of said company, is such application fraudulent?
The Paris Court of Appeal gave a positive answer to this question, in a decision issued on 4 November 2010 which was recently mentioned in Le Journal du Dimanche (6 Nov. 2010).
Back in 1993, Eric Naulleau created a non profit organisation in order to promote literature from European countries located on peninsulas. Said association was named "L'Esprit Des Péninsules" (a word for for translation could be: the spirit of peninsulas). According to the website Bibliomonde, the expression was penned by Bulgarian writer Yordan Radichkov, in a speech he made in Sofia, when trying to explain why is work was more popular in Scandinavian countries.
Then in 1998, together with Rodrigo de Zayas, Naulleau, launched a book-publishing company, also named L'Esprit Des Péninsules. While de Zayas had the majority of shares, Naulleau managed the company. In 2007, the company went bankrupt. A dispute started as it turned out that in 2003, Naulleau had filed a trademark application in classes 16, 35 and 41 for L'Esprit Des Péninsules. The mark was registered in his own name. The INPI database mentions that the mark was transferred to BARDOLLE GAWSEWITCH & NAULLEAU EDITEURS; the recordal date for such transfer of ownership is May 2008.
The liquidator of the company L'Esprit Des Péninsules sued Naulleau in April 2008, arguing that the trade mark had been filed fraudulently and should indeed be considered as an asset of the company. A first instance judgment issued in June 2009 ruled that Naulleau had not fraudulently filed the trade mark, since he "only protected his own creation, which he freely allowed the company to use".While the text of the appeal decision is not yet publicly available, it transpires from the article of Le Journal du Dimanche that the first instance decision was invalidated. The appeal court considered that the mark belonged to the company. Mr Nalleau declared he was considering bringing this case before the Supreme Court.
Posted by: Frédéric Glaize @ 14.31
Tags: fraud, France,