What is the place of alcoholic beverage brands?

Towards the end of the principle of speciality for the benefit of trademarks designating alcoholic beverages?

In accordance with the principle of speciality, two trademarks can coexist if they do not cover the same goods or services.

Consequently, as a matter of principle, a mark designating scented candles and eaux de toilette, such as DYPTIQUE, could not prevent the alcoholic beverages marketing company HENNESSY from registering and using an identical mark for its activity.

However, in accordance with a current trend in recent years (e.g.: Cass. com., December 19, 2006, No. 04-14.420; CA Paris, Pôle 5 ch. 1, October 26, 2011, RG No. 09/23375; CA Paris, ch. 4, Sect. A, September 20, 2000, RG No. 1998/14609; TGI Valence, November 2, 2004, Juris-Data No. 2005-26607), the Court of Cassation has reduced this principle to nil with regard to trademarks designating alcoholic beverages based on article L. 3323-2 of the Public Health Code, which prohibits, among other things, indirect advertising in favor of a product which, through the use of a trademark, is reminiscent of an alcoholic beverage.

The Court of Cassation considers that the registration of a trademark for products covered by the advertising ban of the Public Health Code is likely to paralyze the use of the trademark by its owner, and to deprive him of the exercise of his right of ownership on the sign.

Indeed, confirming the Paris Court of Appeal’s decision of October 26, 2011 (Pôle 5 ch. 1, RG n°09/23375), the Court of Cassation stated that:

“having noted that the company Dyptique had, since^1st The Court of Appeal […] deduced exactly from this, without having to make any further enquiries, that the registration of the HENNESSY trademark and the marketing of products under it created an obstacle to the free use of the former.

Due to the prohibition of indirect advertising of alcoholic products set forth in articles L.3323-2 and L.3323-3 of the Public Health Code, the owner of the previous trademark could no longer promote its products without this constituting indirect advertising of alcoholic products.

However, the decision adopted by the Court of Cassation is not new.

Indeed, case law has already cancelled new identical marks designating alcoholic products because of the existence of an earlier mark identical, such as for example the trademark “Victoria’s Secret” cancelled because of the famous lingerie trademark (Cass. Com., November 20, 2012, n°12-11.753), the trademark “Mont Blanc” cancelled because of the famous dessert cream trademark (CA, Paris October 26, 2011 Pôle 5 ch. 1, RG n°09/23375) or the trademark “Fragonard” because of the famous perfume trademark (CA Paris, ch. 4, Sect. A, September 20, 2000, RG n° 1998/14609 ).

The High Court had also already affirmed this principle for tobacco products with regard to the former article L. 3511-4 of the Public Health Code concerning the prohibition of advertising for tobacco products (CA Rennes, ch. 3, October 6, 2020, n°16/05278).

In this case, the Court of Cassation annulled the “Sobieski” trademark for tobacco products because it infringed the earlier trademark of the same name for alcoholic beverages by depriving the owner of the earlier trademark of his property rights in his trademark.

The broad scope of the assessment of the obstacle represented by the prohibition of indirect advertising of alcoholic beverages

According to the Court of Cassation, the hindrance to the free use of the earlier trademark is created ipso facto by the filing of the later trademark.

It rejected all the arguments raised by HENNESSY to demonstrate the impossibility of a real obstacle to the use of the DYPTIQUE trademark by the eponymous company on the grounds that :

• The advertisements carried out by the company DYPTIQUE, for candles, would not be likely to recall alcoholic beverages (because of the different nature of the products, the distinct clienteles, the distinct distribution networks and the distinct presentation of the signs and the products);

• The advertisements made by DYPTIQUE would not be likely to fall under the ban on tobacco advertisements (advertisements made in decoration magazines for adults).

The judges will also take into account the damage to the image of the reputed trademark on the basis of article L.713-5 of the Intellectual Property Code.

In the Rennes Court of Appeals decision, Mont Blanc argued that the marketing of alcoholic products under the name “Mont Blanc” by a third party would necessarily harm the image of its trademark, since the Mont Blanc trademark, for cream desserts, is aimed at a young public (CA Rennes, 3^ème ch., October 6, 2020, n°16/05278).

In the decision between Diptyque and Hennessy, however, the trademark’s reputation was not infringed because the public concerned was familiar with the trademarks in question and had a prestigious clientele.

However, the judges will not systematically cancel the new identical trademark that would designate alcoholic beverages.

The Tribunal de grande instance (TGI Paris, November 3, 2017, No. 16/07711) recalled that it is necessary to take into account, in particular, the target audiences, the conditions of use and the reputation of the trademarks at issue to characterize whether there is a link in the mind of the consumer between the two trademarks and that, as a result, the use of the trademark would be qualified as indirect advertising for alcoholic beverages.

In this case, in this decision, the High Court did not grant the action for invalidity of the trademark “Cache-cache” to designate alcoholic products, brought by the company of the same name, known for the marketing of women’s clothing and accessories, since the sign “Cache-cache” is a common name and the two trademarks were not well-known (TGI Paris, November 3, 2017, n°16/07711).

In the area of protected appellations,INPI refused to cancel a complex trademark application containing the protected geographical indication (PGI) LAGUIOLE, filed to designate alcoholic beverages, on the grounds that infringement of the name, image or reputation of the municipality of Laguiole had not been demonstrated (INPI, February 14, 2020, 2019-4079). One of the arguments of the opponent according to which it had initiated actions and investments in the field of wine tourism was not retained because of the absence of exploitation of the name LAGUIOLE by the commune for such products. The INPI considered that “the mention of a distillery and a wine shop on the website www.aubrac-laguiole.fr, as well as tourist circuits allowing to discover the local wines, proposed by private operators and not by the opposing commune, do not allow to deduce such a participation “.

The INPI reminds us that in order to demonstrate the infringement of a PGI, it is necessary to provide factual and objective elements of its reputation for the contested products.

Thus, the 2012 Court of Cassation decision (Cass. Com., November 20, 2012, No. 12-11.753) prohibits the filing of a pre-existing trademark for products covered by the prohibition of Articles L. 3511-4 and L.3323-2 of the Public Health Code, including alcoholic beverages.

In light of the above-mentioned case law, prior art searches for trademarks designating alcoholic beverages and tobacco products must therefore be carried out with great caution and include all trademarks, regardless of the classes in which they are registered, in order to avoid any risk of cancellation of the trademark on the basis of the above-mentioned articles of the Public Health Code.