Everybody knows the little clown fish from Walt Disney Studios. But who knows “Pierrot, the clown fish” from Mr Le Calvez ?
Author of a scenario designed to become a cartoon, Mr Le Calvez registered his story in 1995 at the French organism in charge of authors and composers.
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Faced with several refusals from cartoons companies, the project has been transformed into a book for children, published on October 2002 by the Flaven Scene company, of which he is the sole shareholder.
In 2003, “Finding Nemo”, from Disney Studios, appears on the French screen.
On the February 18th same year, Flaven Scene files a trademark application “Pierrot le poisson clown” (i.e. the clown fish), showing the famous fish with orange and white stripes. Mr Calvez sues the american companies, creators of Nemo character, for counterfeiting, in order to stop the commercialization of the by-products.
He is dismissed from his action and is condemned to 30 000 Euros of damages.
At the same time, the assigned companies ask the Court of Appeal on June 21st 2004 to cancel the decision of the INPI director (National Institute of Industrial Property in France) which has allowed the registration of the trademark. The French High Court, on March 6th 2007, had to judge on the delay allowing a owner of prior rights to contest the trademark registration.
According to article R411-20 of the French Intellectual Property Code, the delay to make an opposition against a decision from the INPI Director is one month (or 3 months for companies based overseas).
The litigious trademark was registered on January 2nd 2004, that is the date of the publication of its registration in the Official Bulletin (Article R712-23 of the French Intellectual Property Code).
In this way, the delay for Disney Studios to contest the trademark registration expired at the latest on April 2nd, 2004.
However, the American companies argue the absence of decision of the INPI Director authorising the trademark registration and the lack of sufficient publicity measures for this registration, in order to object to the expiration of the delay.
The Court of Appeal, in its decision rendered on October 1st 2004, dismissed the American companies from their request.
The later have consequently carried the litigation before the French High Court.
The High Court confirmed the Court of Appeal decision to refuse to cancel the registration decision from the INPI director. Its analyse, by combining articles R411-20 and R712-23 of the French Intellectual Property Code, reaches to the conclusion that the starting point of the delay to bring the case in justice is the publication date of the registration of the said trademark in the Official Bulletin.
Pierrot’s future is still in the hands of the small French Company¦but for how long ?
French High Court, March 6th 2007, Walt Disney Pictures and Television, Pixar, Walt Disney Company, Disney Hachette Edition and a. c/ Flaven Scène Company and INPI