While the French Supreme Court (Court of Cassation) has still not ruled on the issue in France, the demands of the town of Laguiole seem to have arrived to the Court of the European Union. The town wishes to regain the use of its name. In a recent judgment[1], the European Court of Justice annulled the trademark “Laguiole” registered for cutlery by the entrepreneur Gilbert Szajner in favour of the company Forge de Laguiole.
In 2001, Szajner successfully sought registration of the Community Trademark at the Office for Harmonization in the Internal Market (OHIM). Forge de Laguiole, which markets the famous knife, subsequently obtained cancellation of the trademark by an OHIM decision on the 1st June 2011. Szajner, a businessman from Val-de-Marne without any connection to the village, brought an action against this decision before the European Court of Justice. This latter recognized “the anteriority of Forge de Laguiole which relaunched this product in 1987 and its specificity” and partially annulled the Laguiole brand.
However, the decision of the OHIM was overruled regarding the nullity of the Laguiole brand for products other than “tools and instruments hand operated”, comprising cutlery. The Court noted that even if “Forge de Laguiole was solely engaged in the cutlery industry,” he stated that Szajner could also continue to use the trademark “for products and services in other sectors.” Consequently, except for the “tools and instruments hand operated“, the entrepreneur is entitled to sell other products under the Laguiole brand.
However, for the EU the brand was partially annulled, the same cannot be said for France as the town [still] awaits the judgment of the French Supreme Court. The town of Laguiole, which alleges despoilment of its name, has waged a fierce battle against the entrepreneur for several years. The town alleged in front of the Court of Appeal of Paris that there were a deceptive commercial practice and a violation of its name, image and reputation. It was unsuccessful as the Court dismissed the case in a judgment delivered on 4th April, 2014. The town appealed. The recent decision from the European Court should rekindle the hope of the Mayor of Laguiole, Vincent Alazard.
While the Laguiole knives won their name back, the Aveyron village, renowned worldwide for cutlery, waits impatiently. The mayor seeks to recognize commercial deception, since he believes that the businessman is using the name of his town for products manufactured in Asia. Under the current law, local authorities do not have an exclusive right for the sign and can only preventively protect their names by filing a trademark registration with the National Institute of Industrial Property (INPI). Deauville, which protected its name in 1998, is a prime example.
Nonetheless, with the advent of the Hamon consumer protection law on 17th March 2014, local authorities can now request INPI to inform them in the event of a third party’s trademark application containing their name. They can also contest it within two months with the Director of the INPI. A town can thus exercise this application under Article L711-4-d and -h of the Code de la Propriété Intellectuelle, in respect of an infringement of its name, image or reputation or in respect of a breach of a geographical indication including its name. But the decree setting out the essentials for implementation of this law is still in the works.
However, the protection offered by the novel law appears to be limited to the goals of regional communities carrying out public service as the TGI of Paris had previously held that a town “cannot, through its interest in its name, forbid companies to operate their business on its territory by using its name, unless it is shown that such use causes a likelihood of confusion with its own competences or is likely to cause prejudice to it or to its citizens.” It only remains to be seen whether the Cour de Cassation will steer towards this direction or make its decision in light of the recent European case law. This judgment is expected to defend the names of local authorities.
[1] Court of the European Union, 21 October 2014, Gilbert Szajner c/ OHMI, aff. T-453/11.