“This article first appeared on WTR Daily, part of World Trademark Review, in October 2021. For further information, please go to www.worldtrademarkreview.com. »

• The Court of Appeal has cancelled Glock’s 3D mark for the shape of its Glock 17 pistol on the ground that it lacked distinctiveness
• The evidence submitted by the defendants established that the shape of the pistol had become generic and commonplace
• However, by using the reputation of Glock’s weapons to promote their own replicas, the defendants harmed – at least indirectly – Glock’s economic interests

On 7 September 2021 the Rennes Court of Appeal issued its decision in Nouvelle Europe’ Arm SAS v Glock GmbH, which concerned the shape of the ‘Glock’ pistol.

Background

Glock GmbH, a firearms company that produces the Glock 17 pistol, owned a French three-dimensional (3D) trademark for the Glock 17 Gen 3, filed on 20 March 2015 in Classes 13 and 28. Glock licenced the use of its trademarks to the company Cybergun for the trade of replica pistols.

In October 2015, having been informed of the discovery and customs detention of a stock of replicas, Glock proceeded with the seizure of this stock, which was held jointly by Nouvelle Europ’ Arm (NEA) and BO Manufacture (BOM). Glock considered that these replicas amounted to counterfeits of its trademarks – and notably its 3D trademark – and that this was a violation of the exclusivity granted to Cybergun. Glock then summoned NEA and BOM before the High Court of Rennes, seeking damages and the destruction of the infringing goods. Glock’s requests were granted.

In response, NEA and BOM filed an appeal.

Decision

After rejecting the companies’ requests for cancellation of Glock’s trademarks (the 3D mark and the word mark GLOCK) for non-use, the Court of Appeal considered their plea regarding the cancellation of Glock’s 3D mark due to its lack of distinctive character for goods in Class 28.

First, the court recalled the principles of distinctiveness and the fact that a sign corresponding to the shape or image of an object that has become commonplace in the trade is no longer capable of acting as a trademark, as it has lost its distinctiveness. NEA and BOM argued that the 3D trademark corresponded to the generic shape of a pistol, particularly as the form and appearance of the Glock 17 had already been largely copied by firearms companies and replica manufacturers before Glock’s trademark application in 2015.

The court held that, when the pistol was created in the 1980s by Glock, it contained numerous characteristics that were not all imposed by the nature or function of the product, thus fulfilling the requirements of distinctive character. However, the evidence submitted by NEA and BOM successfully established that the shape of the pistol had become generic and commonplace over the years.

As such, the trademark was cancelled for lack of distinctive character.

In parallel, Glock argued that its copyright had been infringed due to the commercialisation of the replicas by NEA and BOM. The court recalled the principle of originality (ie, the work must bear the stamp of its author’s personality) and that originality is distinct from the manufacturing process, which is covered by patent protection. Thus, originality must result from an intellectual creation, in that the author expresses their creative capacity in an original way by making free choices that reflect their personality. However, Glock did not show how the characteristics of its pistol, other than those that were purely functional, reflected the personality of the person who designed it. Consequently, the court considered that the company did not hold any copyright in the pistol, and this plea was dismissed.

Finally, the court considered the alleged presence of unfair competition and parasitism. The court recalled that, as it is not a substitute for an infringement action, an unfair competition action presupposes proof of a fault relating to facts other than those alleged in the infringement action. In the present case, Glock accused the two companies of parasitism for having followed in its commercial footsteps in order to benefit from its reputation in the field of handguns, reproaching them of using the same references as those used by Glock to promote replicas of these weapons (for example, by referring to the “famous G17” in their communications).

The court confirmed that, in support of its parasitism action, Glock invoked different arguments than those used for its counterfeiting plea. The court then confirmed that an accused company does not have to be a direct competitor: the fault of the accused company consists in unduly appropriating the economic value generated by the accusing company. Here, by using the reputation of Glock’s weapons to promote their own replicas, NEA and BOM harmed – at least indirectly – the economic interests of Glock, since they deprived it of part of the royalties that it could expect from sales. Despite the invalidity of the 3D trademark, Cybergun would continue to market replicas (through other Glock trademarks that it is authorised to use) in return for payment of royalties to Glock.

The court thus confirmed that the behaviour of NEA and BOM was parasitic and awarded Glock damages on this ground.

Comment

The decision confirms that, even by invoking the invalidity of a trademark as a line of defence, defendants are not protected from being condemned on the grounds of unfair competition and parasitism, which are evaluated separately from the counterfeiting claims. What is interesting in this case in the strategy employed by Glock, which was to invoke multiple legal basis – disassociated from one another – in order to increase its chances of succeeding in at least one of them.

As to trademark protection, the decision highlights the importance of:

• registering rights at the start of a company’s commercial project; and
• when protecting the shape of a product through trademark registration, ensuring that such shape presents characteristics that depart significantly from what is common on the market.

It is important for companies in their creative phase to consider almost immediate protection by choosing the best bases of protection for their project. In the present case, the strategy of filing a 3D trademark appeared to be favourable (as there was no novelty requirement, which is needed for a design application); however, as it was filed too late, this had the opposite effect. Considering the length of time that had passed, it was no longer an option for the company to file a design application, which may have been a favourable option at the start of its commercial project.

Marianna Kull – INLEX IP Expertise