[Guest post] Trade mark trouble in Paris: Pierre Cadault’s journey beyond Netflix

Pierre Cadault
sporting an IPKat-inspired fan

The IPKat has received and is pleased to host the following guest contribution by former GuestKat Nedim Malovic (ASSA ABLOY), commenting on a recent decision of the EUIPO Cancellation Division regarding a trade mark registration for ‘Pierre Cadault’, the name of a fictional character from the show Emily in Paris. Here is what Nedim writes:

Trade mark trouble in Paris: Pierre Cadault’s journey beyond Netflix

by Nedim Malovic

Netflix’s hit series Emily in Paris immerses viewers in the allure of Parisian elegance and the humorous chaos of cultural adaptation, seen through the adventures of Emily Cooper, an ambitious marketing executive. Among the vibrant ensemble of characters, the fictional Pierre Cadault – a legendary French fashion designer – embodies the sophistication and eccentricity of haute couture.

His iconic persona resonated so strongly that it transcended fiction, with a third party successfully registering the EU trade mark (EUTM) ‘Pierre Cadault’ in 2023.

However, the EUIPO Cancellation Division recently invalidated this trade mark, reinforcing the principle that exploiting a fictional character’s name to unfairly capitalize on its established reputation deviates from acceptable commercial practices and may be tantamount to bad faith.

Background

In 2024, Viacom International (the Applicant) filed a filed a declaration of invalidity against the EUTM ‘Pierre Cadault’, covering multiple classes of goods (including cosmetics, eyewear, jewellery, leather goods, and fashion), and claimed that it had been filed in bad faith pursuant to Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR).

The Applicant argued that Webtendances SASU (the EUTM holder) identically reproduced ‘Pierre Cadault’ and highlighted the series' extensive popularity and the character's close ties to haute couture and fashion. It argued that the EUTM holder had acted in bad faith by seeking to leverage the character's reputation for unauthorized commercial gain, asserting that the filing of the EUTM was intended solely to "free ride" on this established recognition.

The Cancellation Division’s findings

Pursuant to Article 59(1)(b) EUTMR, bad faith is assessed having regard to whether the applicant’s intent at the time of filing was contrary to honest commercial and business practices, taking into account all the factors relevant to the particular case (Opinion of Advocate General Sharpston (C-529/07), Lindt Goldhase EU:C:2009:148).

In view of the above, the Cancellation Division considered that the following observations indicated that the EUTM holder had acted in bad faith:

1. Knowledge of prior use: the Cancellation Division found that, given the widespread reputation of Emily in Paris and its character ‘Pierre Cadault’, it was reasonable to presume that the EUTM holder knew of the name’s prior use and association with the series;

IPKat in Paris

2. Overlap in target goods and audience: the goods covered by the contested EUTM (e.g., fashion and luxury items) aligned with the merchandising potential of the series. This overlap pointed to an intention to create an association between the mark and the series, aimed at taking advantage of the reputation built by it; and

3. Intentions of the EUTM holder: the lack of any response or evidence of legitimate intentions from the EUTM holder was deemed significant. It was inferred that the EUTM holder had filed the application with the intent of exploiting the reputation of the fictional character.

The filing of the EUTM was considered to be a conduct that "falls short of standards of acceptable commercial behaviour." This conclusion was based on the evidence provided, the timing of the application, the established reputation of the series, and the lack of a legitimate business rationale on the side of the EUTM holder.

The assessment aligns with the EUIPO's reasoning in an earlier decision (R 1163/2011-1). In that case, the EUIPO First Board of Appeal similarly found that registering the name ‘Tony Montana’, a renowned fictional character from the film Scarface, as an EUTM qualified as bad faith. As in the present case, the filing was viewed as an attempt to exploit the fame of the character without any genuine commercial intent.

Conclusion

The present decision is a noteworthy addition to a series of recent cancellation rulings by the Cancellation Division. Notably, it follows my earlier analysis of the Cancellation Division’s decision concerning the trade mark registration for ‘TESLA’, obtained by a so-called trade mark "troll" (see IPKat here). A common thread in these decisions is the approach to assessing bad faith, which goes beyond mere knowledge of prior use. Instead, it involves both subjective and objective evaluations, focusing on the intent behind the filing and whether it adheres to acceptable commercial practices. Whether it concerns Pierre Cadault, Tony Montana, or Tesla, the EUIPO has shown a consistent commitment to taking firm action against attempts to exploit the reputation of well-known works without proper authorization.

An additional noteworthy aspect of the present decision pertains to the issue of copyright. Specifically, the applicant invoked copyright under Article 60(2)(c) EUTMR, which permits invalidation of a EUTM that infringes an earlier copyright. However, the Cancellation Division did not assess this ground, as the invalidity application was entirely successful based on bad faith under Article 59(1)(b) EUTMR.

In the spirit of Emily in Paris and the flamboyant Pierre Cadault, this decision stylishly reminds us that creativity and reputation deserve to be cherished, not exploited – because, just like Parisian couture, some things simply cannot be faked.