Court of Appeal of Paris issued a very interesting decision on May 11th in the case of Moulin Rouge v. L’Arsoie.
This case dealt, among other things, with a question which is very rarely seen in judicial proceedings: the coverage of a renewal where the mark has been modified and its consequences on rights of priority.
The situation was as follows: The company, L’Arsoie was the owner of a complex trademark which had been registered as early as 1928 (!) and had been renewed in 1982: as a word mark, and with an extension of the covered activities. The opposing party in the case had ownership rights to the mark, MOULIN ROUGE, going back to 1973.
The Court considered that the renewal (performed under the law of 1964) was substantially different from the original mark and that it should rather be considered to be a new filing. In doing so, L™Arsoie lost its rights of priority and ended up being condemned for infringement.
This story (even though connected to a specific renewal procedure under the law of 1964, which has since been modified “ the new law of 1991 provides for a different procedure of anticipated renewal and new filing in parallel) is a good example of the fact that the modification of a logo is not an act to be taken lightly.
The strategic consequences of such a proceeding must be thoroughly analyzed beforehand since viewing the procedure from a purely administrative point of view without seeing its effects on the value added of the mark creates unnecessary risks of modifying not only the rights covered by the mark but also their very existence.