General Court considers enforcement of national sign in CTM invalidity proceedings
In Szajner v Office for Harmonisation in the Internal Market (OHIM) (Case T-453/11, October 21 2014), the General Court has partially overturned a decision of the First Board of Appeal of OHIM in which the latter had upheld an application to invalidate a Community trademark (CTM) registration for LAGUIOLE on the basis of prior use-based rights in France.
Gilbert Szajner owned a CTM registration for LAGUIOLE covering various goods and services in Classes 8, 14, 16, 18, 20, 21, 28, 34 and 38 of the Nice Classification, dating from January 2005. In July 2005 the French company Forge de Laguiole SARL applied to invalidate the entire registration under Articles 52(1)(c) and 8(4) of the Community Trademark Regulation (40/94), now the Community Trademark Regulation (207/2009), on the basis of its corporate name, Forge de Laguiole, which it had used in relation to the manufacture and sale of knives, scissors, gifts, souvenirs and related goods. It claimed that this gave it the right under French law to prevent the use of a later mark.
OHIM rejected the application in a decision of November 27 2006 because the common element 'Laguiole' was descriptive for knives and there was therefore insufficient similarity between the marks to cause a likelihood of confusion.
Laguiole appealed against the decision. In June 2011 the First Board of Appeal of OHIM partly upheld the appeal and cancelled the registration for all of the goods, rejecting the appeal for the Class 38 services. The board held that, although LAGUIOLE was descriptive and non-distinctive for knives, it was nonetheless a dominant element of the corporate name and there was therefore a likelihood of confusion for French consumers. The board added that the prestige and reputation of the corporate name meant that it was highly distinctive and merited exceptional protection even in relation to different fields of activity.
Szajner appealed to the General Court, which partly reversed the Board of Appeal's decision, to the extent that the CTM registration covered goods other than those in Class 8, that is, knives and related goods, paper knives in Class 16 and related goods in Classes 21 and 34.
The primary point of interest in this judgment is that there was a change in French law between the Board of Appeal's decision and the appeal being heard by the General Court which, in essence, permitted the General Court to consider the appeal on the narrower basis of the activities of Laguiole rather than the full list of activities listed in the objects in its company formation documents. It therefore had to consider only the likelihood of confusion in relation to knives, cutlery and related gifts and souvenirs.
The General Court also dismissed the finding that Laguiole had a reputation at the relevant date of November 2001 (the application date of the contested CTM registration) and, therefore, accorded Laguiole’s earlier right an average level of distinctiveness.
This judgment appears logical, although one might feel a degree of sympathy to the parties, including OHIM, because the change in French law occurred after the Board of Appeal's decision which therefore had little prospect of being upheld, although it would have been ultimately less equitable for the General Court to disregard this change when considering the matter and issuing its judgment.
Chris McLeod, Squire Patton Boggs (UK) LLP, London
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