Does everyone remember the preliminary ruling in case C-17/06 of the Court of Justice in the Céline case? Céline SA, holder of the mark CELINE, sought to prevent use of the name Céline by Céline SARL in particular as a company name, trade name and shop name for identical goods.
Back to September 11, 2007, the Court of Justice said that the mere adoption of a mark as a company name or as a shop name offering identical goods does not constitute use of the mark in relation to said goods unless said name is affixed to goods or is being used in a way establishing a link between the name and the goods (what was left by the CJ to the appreciation of national Courts).
The CJ also indicated that, to affect or be liable to affect the functions of the mark, the name concerned must be used in relation to goods or services in such a way that consumers are liable to interpret it as indicating that the goods or services have the same origin. The Court added that the defendant must have acted fairly in relation to the legitimate interests of the trademark owner.
So, worthy of note is the decision of the French Court of Appeal of Nancy issued on April 6 in the French proceeding concerned. The French Court upheld that the functions of the earlier mark had been affected. Evidences were showing that labels with ‘CELINE’ were affixed on the good sold in the shop. The French Court said that, as the goods were identical and the mark CELINE was well-known, the public would wrongly consider that all the goods at hands have the same origin. Trademark infringement was consequently constituted under Article 5(1) of the Directive.
However, the Court made a distinction between the i) trade name and to the shop name and ii) the context behind the company name. The Court considered that Céline SARL had used in good faith CELINE as a trade name and as a shop name because these were adopted two years after the registration of the mark of the plaintiff and at a time when that mark had no particular reputation. But the adoption of CELINE as a company name in 1992 was regarded as resulting from a bad faith process considering the success and reputation that Céline SA had then encountered both nationally and internationally under its mark and given that Céline SA had, before this adoption, warned the other side about the use of the name Céline being detrimental to her.
The decision of the French Court is quite weird. The Court confirmed the first Instance decision by ordering Céline SARL to stop any use of the name CELINE… this is quite a non-sense given the good faith retained as to its adoption as a trade name and a shop name. This might be a proper route to have the matter brought before the French High Court.