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To what extent are reputed trademarks likely to benefit from extended protection?

Vanessa Bouchara

Updated on April 26, 2021

To what extent are reputed trademarks likely to benefit from extended protection of their distinctive signs?

Famous brands are in an increasingly strong position, as they have the largest market share and are making the best progress. Consumers trust these brands and that is why they benefit, under  certain conditions, from a reinforced protection. 

Indeed, reputed trademarks are likely to benefit from a number of tools that allow them to effectively oppose earlier trademarks.

A particularly well-known trademark will be able to have a wider influence than its own field of activity, provided that the use of the second trademark is likely to take unfair advantage of the distinctive character or the repute of the first trademark, or to be prejudicial to it, without just cause.

Furthermore, the strong reputation of a trademark on the market can also have an influence in the assessment of the risk of confusion with an earlier trademark.

Trademarks with extended protection

Famous trademarks are protected beyond their field of specialization.

Since the entry into force of Ordinance No. 2019-1169 of November 13, 2019, which (transposing Directive (EU) 2015/2436 of December 16, 2015 to harmonize and modernize trademark law among the Member States of the European Union), the reputed trademark now benefits from a separate regime from that of the well-known trademarks (trademarks known to a large public but which have not been registered).

Indeed, according to the provisions of article L. 713-3 of the Intellectual Property Code :

The use in the course of trade, in connection with goods or services, of a sign that is identical or similar to the trademark and has a reputation and is used in connection with goods or services that are identical, similar or dissimilar to those for which the trademark is registered shall be prohibited, except with the authorization of the owner of the trademark, if such use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark.

Thus, since the entry into force of the 2019 ordinance, it is now possible for the owner of a reputed trademark to act on the basis of the counterfeit when he notices a use that would infringe his rights and no longer on the basis of civil liability, as was the case before.

According to Article L.711-3 2° of the Intellectual Property Code, also introduced by the 2019 ordinance, the owner of an earlier trademark with a reputation may file an opposition to the registration of a new trademark that would infringe on his rights.

The protection of the reputed trademark is subject to three cumulative conditions(CJEU, formerly ECJ, April 16, 2008, Citigroup and Citibank/OHMI – Citi, T-181/05, paragraph 61):

  • the primary trademark must be well known;
  • the second trademark must be identical or similar to the reputed trademark;
  • the use of the second trademark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the first trademark, without just cause.

To assess the reputation of a trademark, the judge must take into consideration, among other things

  • the market share held by the trademark;
  • the intensity, geographical extent and duration of its use;
  • the importance of the investments made by the company to promote the trademark;
  • as well as any element capable of justifying the reputation of the trademark.

In the following decisions, protection was granted to reputed trademarks beyond their field of activity:

  • ELLE (magazine) / ELLA VALLEY VINEYARDS for wine products (TUE, 9 March 2012, T-32/10);
  • MUST (Cartier) / PEDIMUST shoes intended for health professionals (Paris Court of Appeals, 4th Chamber, Section B, June 15, 2007, on remand from a Court of Cassation decision of July 12, 2005);
  • MUST (Cartier) / MUST filed to market chewing gums (CA Paris, 4th Chamber, Section A, September 29, 2004, n°03/18019);
  • CHAMPAGNE / YVES SAINT LAURENT PARFUMS to designate perfumes (CA Paris, 1st chamber, December 15, 1993, n°93/25039);
  • CHÂTEAU d’YQUEM / LA LETTRE DE BERNARD YQUEM for advertising, business, management services (TGI Paris, Apr. 3, 1991 – P.I.B.D. 1991, n° 507, III-549);
  • CHANEL / JEAN-PAUL CHANEL for alcoholic beverages (Cass. Jan. 23, 1990 – P.I.B.D. 1990, n° 482, III-454);
  • MONT BLANC (cream desserts) / MONT BLANC for alcoholic beverages (CA Rennes, 3rd Commercial Chamber, October 6, 2020, n°16/05278).

Finally, it should also be noted that, as use is one of the three criteria for assessing infringement, it cannot be assessed in the context of an opposition filed against a trademark application (Paris Court of Appeals, 4th Chamber, Section A, June 8, 2005, HUGO BOSS case).

In addition to its usefulness as a tool for defending a reputed trademark against the actions of third parties, repute can also be invoked to defend against a risk of confusion in an infringement action.

When reputation partly allows to escape infringement

In a case opposing the trademark POCKET to MADAME FIGARO POCKET (TGI Paris, 3rd Chamber, 4th Section, March 28, 2013), it was notably noted that The FIGARO company uses the trademark “madame FIGARO POCKET” by using the term POCKET in conjunction with a trademark with a strong identity, since the TNS SOFRES survey shows that 72% of the people questioned know the “Madame FIGARO” trademark. The consumer will not make the link between the product sold under the “Madame FIGARO POCKET” and the “POCKET” marks, the dominant element of the contested mark being the reference to the “Madame FIGARO” trademark.

If certain goods and services of the trademarks “madame FIGARO POCKET” and “POCKET” are identical or similar, and can be distributed in the same places of marketing, the distinctive weakness of the word “POCKET” to designate small format works, the use of this term by the FIGARO company in its current meaning in its trademark “madame FIGARO POCKET” and the explicit reference to the trademark “madame FIGARO” excludes any risk of confusion, in the mind of the public, between the trademark registered by the FIGARO company and the use made of it, and the semi-figurative trademarks “POCKET”.

Even if the assessment of the low degree of distinctiveness of the earlier trademark was predominant in the reasons for the Tribunal’s decision, the reputation of MADAME FIGARO was also able to influence the decision that was rendered.

In conclusion, professionals must adapt to luxury law and use the legal provisions at their disposal to allow these trademarks to have the most extensive protection.

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