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