Mr. Gilbert Szajner has registered several trademarks including the name LAGUIOLE since 1993. It granted many licenses to French and foreign companies on many different products (household linen, furniture, pens, lighters, etc.)
FRENCH LITIGATION
The COMMUNE DE LAGUIOLE has initiated a first procedure against Mr. Szajner Gilbert and Mr. Szajner Louis, who has also filed several trademark LAGUIOLE in his name, and which had given rise to a first judgment on September 13, 2012 by the ‘Tribunal de Grande Instance de Paris'(TGI de Paris, ch. 5, section 2, September 13, 2012, n°12/02742).
The Court of Appeal had dismissed the commune on April 4, 2014, considering, among other things, that ” the LAGUIOLE knife is a name for a knife that has entered common parlance without any direct link to the plaintiff (the commune)” (CA, Paris, Pôle 5, April 4, 2014, No. 2012/20559).
The ‘Cour de cassation’, by decision of October 4, 2016 (Cass. Com., October 4, 2016, n°14-22.245), had considered that:
- On deceptive commercial practices
The COMMUNE DE LAGUIOLE argued that the defendants had deliberately created confusion between their products and the city, by multiplying the references to the place and its history, which constituted, according to it, unfair and deceptive commercial practices within the meaning of articles L. 120-1 and L. 121-1 of the Consumer Code.
The ‘Cour de cassation’ criticized the judges of the ‘Tribunal de Grande Instance de Paris’ for having distorted the documents of the case by not having retained the misleading character of the commercial practices of the defendants, and in particular a survey produced in the debates, as well as the internet site of the defendant using the name LAGUIOLE by expressly referring to “the city of Laguiole”, described as “our village”.
The ‘Cour de cassation’ had adopted a very firm position.
- On the fraudulent deposit
The COMMUNE DE LAGUIOLE developed another argument according to which the defendants had registered their trademarks in fraud of its rights. The Court of Appeal rejected this argument, considering that the COMMUNE DE LAGUIOLE had not been able to demonstrate a fraudulent filing likely to affect the validity of these trademarks.
The ‘Cour de cassation’ considered that the fraud was indeed constituted and noted in particular that the Court of Appeal should have investigated whether the filing of a set of trademarks including the name LAGUIOLE, sometimes combined with the emblematic drawing of a bee, to designate numerous products and services without any connection with this commune, was not part of a commercial strategy aimed at depriving the commune or its current or potential constituents of the use of this name, which was necessary for their activity, characterizing the bad faith of the defendants and vitiating the defendants’ actions.
For the ‘Cour de cassation’, this was all the more true since the trial judges themselves had indicated that the defendants were aware of the existence of the COMMUNE DE LAGUIOLE and that none of the goods and services bearing the trademarks in question were manufactured or supplied on its territory.
The elements constituting fraud were well constituted for the Cour de cassation.
Following this decision, the matter was referred to a Court of Appeal, which ruled on March 5, 2019 (CA, Paris, Pôle 5 ch. 1, March 5, 2019 n°17/04510). The Court of Appeal held that the trademarks in question should be cancelled on the basis of the former article L.711-4 h) (now enshrined in article L.711-3 9°), namely for infringement of ” the name, image or reputation of a local authority “.
However, despite the position of the ‘Cour de cassation’, the Court of Appeal rejected the claims of the COMMUNE DE LAGUIOLE for misleading commercial practices, holding that upon reading the text on the defendants’ website, notwithstanding the questionable use of the term “our village”, the average consumer would not believe that these products originated from the town of LAGUIOLE, as he was informed that the products in question were also manufactured abroad. In fact, the author of the text specified that he ” there are no real or fake knives LAGUIOLE, there are only real or fake manufacturers, knives of poor quality or value, French production sites, both in LAGUIOLE since 1981, in Thiers and in foreign sites, such as Spain, Pakistan and China “.
This is how the French chapter of the judicial saga of the Laguiole case ended.
THE EUROPEAN LITIGATION
On November 20, 2001, Mr. Szajner filed a European Union trademark, which was only registered on February 14, 2005.
The company FORGE DE LAGUIOLE, considering that this trademark infringed its rights (on its corporate name), filed an action for invalidity before the EUIPO.
The EUIPO (EU Trademark Office) ruled in favor of FORGE DE LAGUIOLE and cancelled the trademark for all the goods and services concerned, with the exception of telecommunication services.
The EUT, upheld by the CJEU (CJEU, April 5, 2017, Case C-598/14, EUIPO/Gilbert Szajner), had held that the trademark should be cancelled only for knives and cutlery, since FORGE DE LAGUIOLE had no business in the other sectors.
The CJEU upheld the judgment of the TGI for the following reasons:
– The ‘Tribunal de Grande Instance’ rightly applied the rules of French national law (since the corporate name invoked was a French corporate name).
– In accordance with French law, the protection of a corporate name is only valid for the activities actually carried out by the company.
– The Court therefore perfectly respected the applicable texts by limiting the cancellation to what falls within the activity of FORGE DE LAGUIOLE, namely knives and cutlery.
The decision of the CJEU is also final and the case is now closed.
THE EVOLUTIONS
This does not prevent Mr. Szajner, directly or through other members of his family (Mrs. NAKAZAWA SZAJNER Etsuko, Louis SZAJNER) from continuing to register trademarks, either with the INPI or the EUIPO, some of which are still in force.
The last French filing was on October 14, 2016, , which was entirely denied registration by the INPI following the opposition filed by the commune of LAGUIOLE on January 4, 2017, which was recognized as justified by a decision of the INPI on July 4, 2017 (INPI, July 4, 2017, Opp. No. 17-86 / NG).
The decision of the CJEU is perfectly sound in law and it is quite legitimate that the Court considered that the TEU had correctly applied the rule of law.
As for the ‘Cour de cassation’ , its decision will undoubtedly make it easier for municipalities to oppose third parties using the name of their municipality as a trademark. Moreover, the law of March 17, 2014 (No. 2014-344) gives local authorities new prerogatives, allowing them to protect the name of their commune. Thus, the latter can be alerted by the INPI when a third party files a trademark containing the name of the municipality and even offers them the possibility of filing an opposition (Articles L.712-2-1 and L.712-4 of the Intellectual Property Code).
The Ministry of Crafts and Trades studied in 2017 the possibility of a PGI Protected Geographical Indication bringing together the cutlers of Thiers (Puy de Dôme) and LAGUIOLE (Aveyron), but this does not seem to have been granted.
