Village fails to snatch back own name
Laguiole is a small village in southern France which is famous for the manufacture of cutlery and for certain agricultural products (especially cheese).
The name of the village has been registered as French and Community trademarks by various individuals who have granted licences to other individuals or companies. Certain companies also included the name Laguiole in their company name and sold so-called Laguiole products. Other companies, including non-French entities, also sold Laguiole products without the relevant authorisations, trademarks or trademark licences.
The village of Laguiole sued several individuals and companies on the grounds of tort, misleading advertising and parasitism (passing off), and sought the cancellation of the LAGUIOLE trademarks on the basis of prior rights, lack of distinctiveness, misleading information as to the origin of the goods, violation of public order and fraudulent registration.
The Paris Court of First Instance rejected all the claims and the case was appealed on the same legal grounds.
In a decision issued on April 4 2014, the Court of Appeal of Paris first decided that the village had standing to sue to protect its brand (even though the village did not own any trademarks) and prevent the unlawful use of its identity.
On the merits, the first claim was based on the Consumer Code and, more specifically, on Articles L120-1 and L121-1. The village argued that the association with Laguiole, its rural area, history, crafts and know-how could create a misleading impression with regard to the products associated with that name, and that the various defendants were not using Laguiole as a mark but as a false indication of origin; such use created a prejudice to its name, image and reputation. In addition, the village quoted two 2007 decisions of the Montpellier Court of Appeal and a 2011 decision of the Cancellation Division of OHIM rendered against one the defendants in this case. Laguiole also relied on polls showing, among other things, that an important percentage of the French population had heard about the village and that, for 92% of the respondents, the name Laguiole evoked a traditional craftsmanship.
The court carefully examined the wording of each article of the Consumer Code cited by the village. It recalled that, to apply Article L121-1, one needs to demonstrate a real confusion and not a likelihood of confusion. This implied that the village should have proved that purchases by consumers were generated by the disputed commercial practices, which allegedly consisted of misleading the public by giving wrong or false information on the essential characteristics of the products.
The court believed that this had not been proven and that the results of the polls were in fact disputable, since the first poll showed only that 92% of people had heard about Laguiole in relation to knives, or that 18% had heard of the village in relation to cheese. In the second poll, made on Facebook, only 82 persons had answered and no information was available as to who had answered. Finally, the methodology of the third poll was criticised by the court since the information shown to the public was not exact or specific, but an amalgam of several documents.
The court then reiterated that Laguiole was known for its knives and cheese and, as a consequence, it had not been demonstrated that the public would believe that all other products bearing the word 'Laguiole' also came from this village of 1,300 inhabitants. Even with regard to knives, the relation with the village was not obvious, since it had been shown that only 0,5% of Laguiole knives come from that area (a large part of Laguiole knives are made in Pakistan and China).
The fact that one of the defendant's communications included information about the Aubrac - which is the name of the area where Laguiole is located - was not considered to be false or misleading, since it had been proven that there are no true or false Laguiole knives, as they come from various areas and even different countries. The court followed the same type of reasoning with regard to another company which was selling Laguiole products engraved with the word 'PRC', which French consumers may not have understood as referring to a Chinese origin. The fact that the catalogue of that company showed the picture of a loaf of bread and a knife in front of a street sign mentioning Laguiole was not a misappropriation of the name of the village, since consumers would not make a link between the bread and the name of the village, and such use could be seen as use of the LAGUIOLE mark, registered by this company.
The court examined the behaviour of the various defendants to ascertain whether they were using the name Laguiole in a misleading way or as a trademark, as shown by the use of the ® sign. For instance, it was known that 'Laguiole' is a generic word for knives, but that it is not famous for other goods such as shoes, and its use for those products was not misleading.
The behaviour of a Belgian company which sold tableware in partnership with a famous chef of the area, Mr Bras, was not misleading since the village could not claim to have a monopoly over the notoriety of the chef.
Further, the court did not accept the fact that confusion could be created between an 'O brac' (a play on word with the name Aubrac) perfume and a potential perfume which could be created on the territory of the village due to the fact that the founder of the company producing the perfume was born in Laguiole - a fact which, according to the court, was not mentioned anywhere in the case.
The same type of reasoning was used to reject the village's claim against a company which was using the name Laguiole for frying pans and against another company which was using references to Laguiole and the Aubrac for eyeglasses.
With regard to each defendant, the court found that it had not been proven that commercially misleading practices were used to create confusion among the average consumers.
Further, the claim for cancellation of 26 marks owned by different parties was rejected. With regard to five of these marks, the claim was dismissed on the basis that the same issue had already been decided in a previous case. The request for cancellation for lack of use was rejected for another 11 marks registered prior to May 31 2005 since they had not been registered in bad faith and the village of Laguiole had tolerated their use for more than five years.
With regard to 10 other marks, cancellation was requested on different grounds, the first one being fraudulent registration. The court rejected this claim on the basis that it was imprecise and that the village had not explained how it had acquired a national or even an international reputation. The village should have demonstrated how those registrations deprived it of its rights or how the trademarked goods were associated with products of poor quality.
The village also claimed that a likelihood of confusion existed between the various contested marks and the village of Laguiole. This led the court to consider whether the marks were distinctive, deceptive and violated prior rights.
The distinctiveness issue was examined on the basis of the 1999 decision of the Court of Justice of the European Union (ECJ) in Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97). The court rejected the claim of lack of distinctiveness since the position of the village was vague and did not explain why the marks were not distinctive on a case-by-case basis and in relation to each type of products and services covered. In addition, nine of the 10 marks were not using the word 'Laguiole' alone, but in conjunction with other words and/or figurative elements.
With regard to deceptiveness, the court referred to the 2006 decision of the ECJ in the Elizabeth Emmanuel case (Case C-259/04), stating that the likelihood of confusion must be appreciated in relation to the average consumer to ascertain whether he/she could be misled or, at least, whether a risk of being misled existed.
Once again, the court considered that the village's claim was very general and vague, and not explained for each mark. It considered that, even if consumers made a link between the village and knives/cheese, they would not think that all the other products and services bearing the mark LAGUIOLE came from this “small" village.
The court then considered whether the marks were prejudicial to the village's prior rights over its name, image and reputation. The claim was again rejected because the village had not demonstrated that use of the contested marks was made in a field of public service similar to that carried out by a city, and that such use could either create a likelihood of confusion with the village's attributions, or damage the public interest of, or create a prejudice to, the inhabitants of the village.
Further, the village sought forfeiture of the marks for lack of use due to their misleading character. The court stated that it was strange to claim that the marks should be cancelled for lack of use on the one hand, and that their use was misleading on the other. The court noted that this claim had already been rejected in a previous part of the decision.
This decision is very difficult to read, since the court had to answer a very long (219 pages) and confusing brief, as the village based its claims on almost all the grounds provided by the French Intellectual Property Code. The village's claims were disorganised and not sufficiently detailed, since 26 marks were attacked at the same time.
However, even if the village lost at the first instance and on appeal, this case remains significant since it was the trigger for a modification to the French IP Code, enacted on March 17 2014, which aimed to provide better protection to the name of towns and cities.
Richard Milchior, Granrut Avocats, Paris
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10