France
- Protection of Trade Mark Design
When business
and the community trade mark came into force ten years after the
OHIM opened doors for business, the French Courts adopted the principles
laid down in the European Court of Justice's proceedings in 1999
in a case General Motors Corporation vs. Yplan SA. that "a
trade mark must be considered as having a reputation if it is known
by a significant part of the relevant public in the field of the
goods or services". However, this change in approach
by the French Courts created some peculiar results, as follows:
1. The French
Trade Mark Office and the courts readily accept marks for registration
that would have been considered devoid of distinctive character
before the Community Trade Mark Office (OHIM) for the reason
that contrary to Community law, a lack of distinctive character
does not constitute an absolute ground of refusal under French Trade
Mark law. Moreover, it provides that a design is distinctive
only if it is considered the necessary description of the goods
or services in question.
2. Designs
that are considered descriptive of the characteristics of the goods
or services are also refused registration as are functional, consist
exclusively of the shape of the goods or add substantial value to
the goods.
With these
in mind, the following trade marks are registered:
a) "Feel
Good" for leather or leather products, such as clothing and
toys. (b) "Global Document Solution" for fax machines,
photocopying machines. (c) "Publishing Management" for
goods and services. However, such an association of words
were not considered and thus the mark was held to be inherently
distinctive for other goods and services. (d) "Rasoir Sans
Lame" for razor without blade goods on the grounds that shaving
razors necessarily contain a blade and the expression by the average
consumer is considered fanciful, thus rendering the mark distinctive
for these goods.
In several
cases and decisions, the French Supreme Court has decided that "offence
caused to the private rights constituted by the ownership of a trade
mark justifies as such the allocation of damages, whatever the potential
commercial prejudice." French law and case law is the only
system in which trade marks designs are protected even without any
use in the market. It is all the more important since French
courts are now granting large amounts of damages in such cases.
In parody cases, French courts considered that the scope of protection
of trade mark design does not extend to non-commercial use, and
that the companies had to place themselves on the ground of general
liability in order to obtain prohibition of the parodied use of
their trade marks.
With regard
to trade marks protection enjoying reputation, the French courts
now apply the test laid down in the ECJ judgement, according to
which a trade mark must be considered as having a reputation if
it is known by a significant part of the relevant public in the
field of the goods or services in question. Before the decision
of the ECJ, the French courts required that to be a mark having
a reputation, the mark had to be known by a significant number of
French consumers at large. The current approach adopted by
the courts therefore reduces the threshold of recognition required
and facilitates the finding that designs may be considered well
known or as having a reputation. In order to make it more clear,
in a case Cartier SA vs. Xxipas Sarl, the use of the trade mark
'Pedimust' was prohibited due to the earlier well known trade mark
'Must' which was having a good reputation.
As regards
revocation actions concerning generic trade marks, Article L714-6
of the French Intellectual Property Code (IPC) states that "the
owner of a mark shall be liable to revocation of his rights if the
mark has become the common name in trade for a product or service".
So, in order to counteract generic use, the brand owner has to defend
their rights by sending letters in evidence before bringing infringement
actions.
As for as
protection of trade mark designs is concerned, Article 2.7 of the
Berne Convention allows the protection of a design, shape, character,
icon, pictogram, trade dress and so on may be recognized under copyright
law in other Berne Convention countries only if the design, shape,
etc. are subject to copyright protection in the country of first
publication. Consequently copyright protection will be granted
and the owner may benefit from copyright protection in all other
Berne Convention countries where such protection is recognized.
Conversely, if the design, shape, character, icon etc. is published
for the first time in a country where copyright protection is not
afforded, the creator would not be in a position to claim copyright
protection in other Berne Convention countries on the ground that
no greater protection is allowed in these countries than in the
country of first publication.
Therefore,
for obtaining the broadest copyright protection all over the world,
it is advisable to file a first design application in France, so
as to be in a position to claim a first publication in the meaning
of the Berne Convention in France so as to claim copyright protection
of the designs.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
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