European trademark or national trademark…That is the question ! 2

Today, adopting a European trademark “mechanically” can have consequences that would be best to be anticipated.

This article attempts to provide answers to the following questions:

  • Is the EU trademark the best cost/protection ratio?
  • Can the Community trade mark may serve as the basis for an international application filing?
  • Does use in a country alaways make it possible to thwart an action for revocation?

In conclusion, owning or planning to register an EU trademark should no longer be a “reflex” decision, but should be accompanied by a reflection allowing, by making appropriate decisions,  to secure your rights within the EU area.

Does the use of a company name or a trade name worth be a trademark use?

In the same vein that the judgment about the trademark Grand Frais, the Cancellation Division of the EUIPO has recently confirmed the cancellation for non-use of the trademark Cactus, a trade name for a supermarket, for cosmetic products. If the use as company name and trade name is admitted, no serious use in the meaning of the trademark law is shown; presented evidence being insufficient. This is the opportunity to remind the notion of serious use according to the trademark law, together with its practical conditions, for example when the litigious sign is used as a company name or a trade name.

Only available in French. Read here.

 

GALLO at the receiving end of the stone throwing

E & J Gallo winery is the owner of the European Union trademark Gallo for alcoholic beverages in class 33, registered in 1996.

This trademark was the subject of a claim of seniority of a French trademark of 1968.

The claim of seniority is an act enabling the owner of an EU trade mark to retain anteriority ? in national countries, while having the possibility not to renew the said national trade marks on their expiry date.

The Gallo winery company considering that the company Champagne Gallo was infringing its rights by using the Gallo sign, assigned  for infringement.

Reconventionaly, Champagne Gallo applied for the invalidity of the EU trade mark and the revocation for non use of the French trade mark

On 6 October 2016, the Commercial Chamber of the Court of Cassation retained:

That Gallo Winery is the owner of an EU trademark, whose seniority has been claimed, namely the French trademark not renewed at expiry in 1998, and not used since its registration in 1968.

That Champagne Gallo has been using the name Gallo as its corporate name and to market champagne since 1984,

That the French trademark claimed as seniority, continued to produce effects only as long as it was still in force.

That having ceased to be so (trademark not renewed at its expiry date + not used), the subsequent use of this trademark by Gallo winery no longer benefited the French trademark but only the EU trademark subsequent to the acts of use of the Gallo champagnes !

 

Finding himself at the receiving end of the stone throwing, GALLO winery loses its French trademark for non-use and, its EU trademark due to previous rights of use of Champagne Gallo!

Lessons learned from this decision:

– On the one hand, it is not necessary to claim seniority of a national trademark that is not exploited and can be revoked (because as a risk of retroactive revocation, this results in loss of seniority)

– On the other hand, it is necessary to monitor one’s trademark and avoid third parties slipping between the rights (here Gallo would have had to see the registration of Champagne Gallo, exploit its French trademark at least for the purposes of the case and then act)

– Finally, we must carefully choose the right moment to start hostilities!

Morality the devil often hides himself in the details and, when it comes to brand use, everything is often a question of detail!

 

Céline BAILLET European Trademark Attorney-INLEX IP EXPERTISE

Trademark owners: check now your trademarks evidences of use!

In recent months, we have seen an increased number of administrative cancellation actions for non use against our clients’ trademarks, mainly at EUIPO level. However, in the context of these actions, we have repeatedly noted that either the “attacked” trademarks are not exploited optimally or, in the vast majority of cases, that the proof of their uses is difficult to report even when these uses have a significant volume.

In almost all countries, however, there is a rule according to which a trademark that has not been exploited or has been badly exploited for a given period may result in the loss of the right and, therefore, the loss of the resulting competitive advantage. This situation therefore places trademark owners at risk at different stages in the life of a trademark….especially since the new European Directive  will soon allow third parties to intend cancellation action for non-use of trademarks through quick and inexpensive administrative procedures which until now have been available in most cases only before the courts.

You will note in this regard that the Benelux has already announced the opening of a cancellation and revocation chamber since  1st past and that the INPI should comply with the EU directive by 2019.

Within two years, it is therefore to be expected that revocation actions may be initiated in each of the EU countries in addition to those that may already be brought before the EUIPO against European trademarks.

For the record, a use is considered as validating a registered trademark when it is serious, unambiguous, public, in conformity with the sign as filed and for the goods or services referred to in the filing.

According to a study of the decisions rendered by the EUIPO, we were able to find that 50% of the “used” marks « attacked » in revocation were cancelled because the applicant was unable to provide sufficient proof of his exploitation!

In view of this observation, it is crucial for trademark owners to already study the evidence of use of their rights in order to determine the potential existence of a”flauw” and, in a second step, to determine the actions to be taken in order to fill a gap in use.

This work has a triple objective to know:

  • To be aware of the areas in which there is a problem of use
  • To set up a use policy adapted to the different types of brands and the different territories of interest
  • To perpetuate its trademark rights and thus increase their value (in the context of an asset valuation, vulnerability is a criterion for depreciation).

And, consequently, to serenely apprehend the next evolution in the practice of trademark offices.

 

Celine BAILLET, European Trademark Attorney Inlex IP Expertise

TRADEMARK USE IN BUSINESS AND COUNTERFEITING – BE CAREFUL HOW YOU VIEW THEM!

It is a known fact that trademark counterfeiting is used for business purposes.

When this type of use does not exist, it casts doubt on the validity of infringement action. This was the conclusion of the French Supreme Court on 10 May in the FGCEN/FSESN case (appeal no. 10-18173): the FGCEN, owner of the La Basoche trademark in class 16 in particular, had noticed that the FSESN also disseminated a free, regularly published union newsletter aimed at informing FSESN staff on their right to work.

The counterfeit case was rejected by the Supreme Court, which found that the newsletter in question was “unrelated to business” as it was not aimed at obtaining any “direct or indirect economic advantage”.

Conclusion:

If in doubt over the notion of use in business, it is better not to use the domain of trademark law as a basis for legal action, but rather to opt for unfair competition, which lessens the chance of contestation.