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