For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Thursday, 7 October 2010

Céline, c'est la vie -- mais ce n'est pas le fin

Céline, with the accent ...
In the dim and distant past, when dinosaurs ruled the world ... well, this may be a slight exaggeration but we're talking about September 2007, a long time ago in Kat's years, the Court of Justice of the European Communities (as it was then called) gave a fairly unspectacular ruling in Case C-17/06 Céline SARL v Céline SA. The court's ruling was prompted by a reference for a preliminary ruling from the Cour d'appel de Nancy, France and arose from a dispute between two businesses, each of which claimed an entitlement to the word Céline: the claimant, which had a registered trade mark CELINE, sought to prevent the defendant appropriating Céline as a company name and shop name. The Court ruled as follows:
""The unauthorised use by a third party of a company name, trade name or shop name which is identical to an earlier mark in connection with the marketing of goods which are identical to those in relation to which that mark was registered constitutes use which the proprietor of that mark is entitled to prevent in accordance with Article 5(1)(a) of ... Council Directive 89/104, where the use is in relation to goods in such a way as to affect or to be liable to affect the functions of the mark.

Should that be the case, Article 6(1)(a) [of the same Directive] can operate as a bar to such use being prevented only if the use by the third party of his company name or trade name is in accordance with honest practices in industrial or commercial matters".
Fast-forward to April 2010 and we have the ruling of the Cour d'appel de Nancy, helpfully summarised in volume 65, no.17 of the INTA Bulletin (released 1 October 2010).  This summary, by IP enthusiasts Franck Soutoul and Jean-Philippe Bresson of Inlex IP Expertise, reads in relevant part as follows (nb items such as this do not appear in the INTA Bulletin unless they have been independently verified, which makes them commendably reliable):
"The French court held that the functions of the earlier trademark had been affected. Evidence showed that labels with CELINE were affixed to the goods sold in the shop. The court said that, as the goods were identical and the trademark CELINE was well known, the public would wrongly conclude that all the goods had the same origin. This constituted trademark infringement under Article 5(1)(a) ...

However, when addressing the defense’s fair use arguments, the French court distinguished between the trade name and the shop name ... and the context behind the company name ....
Céline SARL had used CELINE as a trade name and as a shop name in good faith because the name was adopted two years after the registration of the plaintiff’s trademark and at a time when that trademark had no particular reputation.

However, the choice of CELINE as a company name in 1992 was regarded as resulting from bad faith, considering the success and reputation that Céline SA had then obtained both nationally and internationally under its trademark and given that Céline SA had, before the adoption, demanded that the other company not use CELINE as a company name.

While following the ECJ ruling, the decision of the French court was quite unusual in the end. The court ordered that Céline SARL stop “any” use of the name CELINE (including as a trade name or shop name). However, this position does not make sense given the finding that the trade name and shop name were adopted in good faith. This might be grounds for an appeal to the French High Court".
... and without
The IPKat has observed that sometimes a court's judgment can make perfect sense in terms of the application of each of a set of rules to a set of facts, yet produce a result that can seem quite perplexing to traders or consumers.  On other occasions it may make a ruling which makes good sense to traders or consumers but appears to violate the text or purport of the laws.  We can't really decide whether our judiciary should serve a function which is (i) quasi-legislative in terms of how it shapes and develops statute law, (ii) purely interpretative or (iii) narrowly focused on giving words their literal meanings and applying them literally to the facts.  If one started with the facts of Céline and considered how best they should be resolved, rather than starting with the law and deciding on the outcome of its application to the Céline facts, would the two processes have a coterminous 'footprint'?

Merpel says, there's something very attractive and marketable about French forenames: Céline, Colette, Amélie, Capucine, Candide, Cher, Heloise, Michelle, Giselle, Babar ...

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