In Case T-453/11, the General Court had to brush up its knowledge of French trademark law opposing two competitors for knives and related goods over the use of the sign LAGUIOLE.

 Mr. Gilbert Szajner  registered the CTM LAGUIOLE in 2005 for goods and services in classes 8, 14, 16, 18, 20, 21, 28, 34 and 38.

The company Forge de Laguiole SARL brought a partial cancellation action on the basis of articles 52 (1) c) and 8 (4) CTMR on the grounds that there was a risk of confusion with earlier trade name FORGE DE LAGUIOLE used in France for "manufacturing and sales of knives, scissors, souvenirs, gifts -and all articles related to the art of the table".

Article 8 (4) CTMR contains 4 cumulative conditions: 1)the sign must be used in trade and 2) has more than mere local use, 3) the right must have been acquired before the contested CTM and 4) the owner must be able to oppose a junior mark according to the local law.

The Board of appeal had applied the French case-law, regarding condition 4),  which was  in force at the time of its decision on 1 June 2011 according to which a company name is protected for all the activities listed under the section "company's objects " in its Memorandum of Association.

Before the Judgment of the GC was issued, the French Supreme Court reversed this controversial trend (object of critic by the French doctrine) in a Judgment dated 10 July 2012 which ruled that the "company name would be protected solely for the activities effectively in use and not for those listed in the MofA".

Thus the GC examined what was the actual use of the sign LAGUIOLE and found that it was protected for "knives and cutlery, gifts and souvenirs as related to the above mentioned goods only".

In spite of the evidence submitted by the cancellation applicant (foreign awards for best design, press article, etc) and contrary to the findings of the BoA,  the Court found that it had not established any reputation prior to 2001, the date of application of the contested CTM. Thus, an average distinctive character must be taken into account (although its descriptive character had been recognized by French case-law because Laguiole refers to the place of origin).

The GC confirmed there was a likelihood of confusion between the signs for all similar goods, including "spoons, rasors and all affiliated goods, manicure necessaire" in Class 8, "letter openers" in Class 16, "bottle-openers; shaving instruments" in Class 21 and "cigar-cutters; pipe cleaners" in Class 34.