News: Marie André-Nivet

A new episode of protecting the famous red sole in China prompted us to consider this subject.

In China and for the first time in this country, it could be conceded that a color affixed to a specific area could constitute a trademark.

On February 3, 2010, the luxury shoe brand Christian Louboutin filed an international trademark application to protect, particularly in China, “the red color (Pantone No. 18.1663TP) applicable to the sole of the shoe”.

After several rejections of Louboutin’s application by the Chinese courts, on the grounds that the trademark in question was devoid of any distinctive character, the case was brought before the Second Instance. It was then recognized that such a sign could constitute a trademark. However, this decision, which demonstrates a certain flexibility on the part of the Chinese trademark courts, remains provisional. The case must again be brought before the Chinese Trademark Review and Arbitration Committee, and the validity of Louboutin’s design trademark could still be called into question.

But what does French law provide in this regard? While in theory it is not excluded to file a color as a trademark, cases of granting registration are rare.

Article L711-1 of the Intellectual Property Code defines “a trademark or service mark” as “a sign capable of being represented graphically to distinguish the goods or services of a natural or legal person. Such signs […] can be established through the layout, combinations or shades of color“.

Like any trademark, such a sign must be distinctive, i.e., allow a consumer to identify the commercial origin of the designated products/services in relation to their competitors’ products/services. However, a color is rarely perceived as a distinctive element, and it generally acquires its distinctiveness through use. In other words, because of its widespread use, a consumer will immediately associate the color with the entity behind the trademark. This is the case for Milka‘s lilac color, Hermes‘ orange or Tiffany‘s aqua blue, which are now registered, known and recognized trademarks.

In addition, such a sign should be identifiable through a clear and precise graphic design. This condition cannot be met by simply reproducing the color on paper; the color shade must be clearly identified and specific using an internationally recognized color code, such as Pantone.

Recent case law points out that trademarks consisting of a color do not easily meet these two conditions. However, this does not mean that they will be totally unprotected.

Some colors are part of the visual identity of companies but do not benefit from brand status. However, in the event that a competitor adopts the same colors in order to mislead the public, the company may benefit from protection claimed on the basis of unfair competition.

There’s been a victory for Laguiole, the village in Aveyron famous for its knives bearing a bee insignia on the handle, which since March 5, 2019 has benefited from the Paris Court of Appeal ruling that cancelled twenty brands using the “Laguiole” name.

The municipality had been fighting for over twenty years against a Val-de-Marne businessman who in 1993 registered the Laguiole name as a trademark in France to designate not only knives, but linen, clothing and fertilizers as well. The range of products sold under that name did not come from the Laguiole municipality at all, and most of them were even imported products. The patent applicants were not citizens from the municipality either.

As such, the Laguiole village craftsmen were deprived of the possibility of manufacturing or selling products under the “Laguiole” brand without being sued for counterfeiting. “Even with a locally made product, I would’ve been declared a counterfeiter, sometimes even up against Chinese products,” explained Thierry Moysset, manager of La Forge de Laguiole, a company manufacturing the ‘authentic’ Laguiole knife.

In 2010, the municipality brought the case before the Tribunal de Grande Instance of Paris (district court), in hopes of obtaining the cancellation of the “Laguiole” brands. The case was dismissed and the ruling confirmed on appeal in 2014. However, in late 2016, the Court of Cassation introduced a new episode in the legal proceedings by partially annulling the Court of Appeal ruling; it noted that the Municipality had proven that the brands being sued had been registered maliciously.

The case was finally judged on March 5, 2019 by the Paris Court of Appeal (Court of referrals), which ruled in favour of the Aveyron village, considering that the contentious brands had been registered “fraudulently” within the framework of a “strategy aimed at depriving the Laguiole municipality and its citizens of using the name”. In addition to the invalidity of the 20 brands registered, the municipality of Laguiole received $50,000 in compensation for the non-pecuniary damage suffered. The Court assessed that the Municipality had been deprived of its name and its reputation harmed.

It is worth noting that to fight against such practices, the Hamon Law dated March 17, 2014 had already given territorial authorities new means of defence by allowing them to be informed by France’s National Institute of Intellectual Property (INPI) of any application for registering a trademark incorporating the name of the municipality or a similar name and by giving them the right to oppose its registration.

This legal saga clearly sums up just how hard it is to protect the name of a regional authority in the face of a competing brand. A ruling that could therefore reveal the judges’ determination to protect local and “Made in France” interests.

Caution: the ruling should nevertheless be taken with a grain of salt. Some Laguiole brands are still on the market and the businessman can still file another appeal.

“Hakuna Matata”! Many of us associate that phrase with the American firm, Disney, and its animated feature film The Lion King. Nonetheless, the phrase no longer benefits from the carefreeness of the 1990s.

This now well-known catchphrase was registered as a trademark back in 1994, when The Lion King was released in movie theatres by the American company DISNEY ENTERPRISES. It was for a French trademark designating restaurant services, and an American trademark for products such as t-shirts. It means “no worries” in Swahili, a language used by a major part of Sub-Saharan Africa.

The announced release of Disney’s new version of The Lion King scheduled for July 2019 has given rise to many reactions from East African populations. An online petition against the registration of the expression as a trademark has officially requested the American firm to relinquish its right to the trademark.

Part of the African public opinion does indeed consider that this protection of the expression as a trademark is an “attack against the Swahili people and Africa as a whole”, and a characteristic sign of “theft of African culture” carried out over the years through the use of intellectual property rights.

Although the cultural and emotional attachment is comprehensible, it is worth noting that the expression “Hakuna Matata” does not appear to fall within the exceptions opposed to the registration of an American and/or French trademark. As such, a trademark based on an everyday or foreign language expression is lawful and valid, provided it is not the common and necessary designation of the product or the service it refers to. The risk for the holder(s), however, is that their rights would be limited in practice. The holder could therefore not oppose the use of the said expression by a third party, insofar as the expression is used with its everyday meaning.

Among the means that might be used for challenging the validity of the Disney company’s “Hakuna Matata” trademarks, is the prohibition on registering a country’s coat of arms, flags and other insignia as a trademark, provided, nonetheless, that the trademark at issue is not likely to mislead the public as to a connection existing between the trademark holder and the country whose coat of arms, flag or other insignia are appropriated by the said trademark.
Yet, in this instance, it is doubtful that the French and American public associate the “Hakuna Matata” trademark with East African countries; on the contrary, they will probably associate it with the American firm. Something the petitioners were probably already aware of when they requested Disney to voluntarily relinquish its rights to the trademarks. To the best of our knowledge, no legal proceedings have been initiated so far.

We’ll be keeping an eye on this case as 2019 gets off to a start…

Above and beyond potential protection by Copyrights, all graphics or designs can be protected by Design rights.

Any reproduction, without consent, of graphics or designs protected by design rights constitutes, as a matter of principle, an act of counterfeiting. Consequently, caution is required.

In two rulings on September 27, 2017 opposing the companies Nintendo and BigBen Interactive GmbH / BigBen Interactive SA, the European Court of Justice (CJEU) nevertheless laid down a strictly-regulated exception to the protection of designs.

The company Nintendo filed a counterfeit claim against the video game accessory manufacturer, BigBen Interactive, who was reproducing, for the purpose of selling its products, images of Nintendo console accessories protected by design rights.

The Court of Justice took a chunk out of rights holders’ monopoly by judging that a design could lawfully be reproduced without prior consent from the holder if that reproduction was an illustration.

The images were considered illustrative insofar as they allowed to demonstrate the joint use of the BigBen Interactive and Nintendo products to consumers.

Nonetheless, this lawful reproduction is subject to conditions.

The Court of Justice requires that the reproduction of the design be made within the framework of loyal competition and that it not threaten the economic balance of its holder. Moreover, it must be possible to identify the holder of the design reproduced.

Lastly, caution is required since, although the Court of Justice’s interpretation seems to reduce the scope of protection for Community Designs, the exception is nonetheless subject to conditions and may be limited by potential cumulative protection by Copyright.

European Court of Justice, September 27, 2017, C24/16 and C-25/16, EU:C:2017:724, Nintendo / BigBen Interactive GmbH and BigBen Interactive SA.

As summer ends, now is as good a time as any to be reminded of an indispensable precautionary measure that should be taken by all entrepreneurs!

Unlike in the American system, under French law, your company is not automatically the owner of the creations (such as artwork, design or photo) that you order from and which are developed by external service providers, or those developed in-house by your company’s own employees.

In order to be allowed to use those creations freely, within the framework of your employment contracts or your service contracts concluded with external service providers, your company must make sure to include a transfer of rights clause adapted to your business sector, scrupulously complying with the provisions set forth in the French Code of Intellectual Property. If such a transfer has not been set up – or in the event of a poorly prepared transfer – the property rights regarding the creation will remain in the ownership of the creator who can object to the said creation being used by your company, in any form whatsoever.

That negligence is not without consequences for your company, whose entire business could, in extreme cases, be jeopardised.

The absence of a transfer of invention rights to your company might also delay action by certain investors or buyers, or even cause them to reconsider their planned acquisition or investment.

As a result, it would be especially unfortunate to be confronted with this complication when, in fact, it can be avoided beforehand, by making simple, albeit specific and adapted, arrangements in advance.

The Court of Justice of the European Union has decided on Tuesday 12 June and has sided with Christian Louboutin: a colour, when placed on a product or part of a product, may be registered as a trademark in the European Union insofar as it allows the consumer to identify the origin of the purchased product.

Court of Justice of the European Union, Grand Chamber, 12 June 2018, C-163/16, EU:C:2018:941, Mr. Louboutin and Christian Louboutin SAS vs. / Van Haren Schoenen B.V.

Christian Louboutin will therefore retain its trademarks in the European Union, consisting exclusively of colour 18-1663 TP of the Pantone colour chart, placed on the sole of its high-heeled shoes.

Among its numerous trademarks, the Benelux trademark was registered in 2010 in the “shoes” class and, as of 2013, in the “high-heeled shoes” class. This trademark is described as consisting of “the colour red (Pantone 18-1663 TP) applied on the sole of a shoe as represented (the contour of the shoe does not form part of the trademark but is used to show the placement of the mark)”.

In 2013, Mr. Louboutin and his company filed a lawsuit for trademark infringement against a Dutch company named Van Haren, which had marketed high-heeled shoes with red soles in 2012.

In its defence, Van Haren argued that the trademark invoked was invalid due to the fact that this trademark was solely constituted of the shape of the product in question (in this case, the sole of a high-heeled shoe).

Having been called upon by the Hague Tribunal, the Court of Justice of the European Union (CJEU) responded to its interlocutory question regarding the validity of the colour trademark (Pantone red 18-1663TP) invoked by Christian Louboutin.

According to its decision of 12 June 2018, the Court decided that the term ”shape” mentioned in the law must be construed according to its common meaning. However, a colour in itself, when not delineated in space, does not constitute a shape.

This applies even if the shape of the product (or part of the product) plays a role in delineating the colour in its space: the sign for which trademark protection was sought cannot be considered to consist of its shape, for which no registration was requested, but rather only as the application of a colour on a specific area of the product, in this case, a positional mark.

While this decision is a legal decision, the work and investments of Mr. Louboutin to ensure the monopoly of Pantone 18-1663 TP red soles have also ensured this favourable decision. Indeed, the impact of the considerable investments made by Mr. Louboutin and his Company to promote his “colour trademark” and their communication efforts on their red-soled shoes should not be downplayed. They have largely contributed to giving a strongly distinctive characteristic to the red-coloured soles as a result of constant use.

In addition, given the numerous decisions of the European Union Intellectual Property Office (EUIPO) refusing to register positional marks for “lack of distinctive character”, we can only temper the future enforcement of the general rule set by the CJEU.

A drawing or model is considered new if, on the date of filing the application for registration or on the date of the claimed priority, no identical model or design has been disclosed, i.e. made accessible to the public (ex: publication, use, exhibition at a trade show or by any other means).

Are you, or your employees, creating a product that has a new appearance or a specific feature? A shoe? A piece of furniture? A handbag? Apparel? A pattern? Do not disclose it before having filed a registered design application. If you shared, released, or presented your product to the public less than 12 months ago, you should apply for protection of the design and model as soon as possible and do so, before the 12-month time period expires. Failing that, your registered model and design risks being cancelled for lack of novelty.

As such, Crocs, Inc.’s rights on the community model of its clogs did not survive the application for declaration of invalidity filed against them. Their novelty was destroyed due to the disclosure of the product more than 12 months prior to filing the registered Community design application.

In its decision of March 14, 2018, the EGC considered that disclosure was constituted by: showing the clogs at issue at an international boat show in Fort Lauderdale, Florida; putting the clogs on sale in the United States (for which sales trends are substantial for the EU market) and featuring them on the internet (which, by nature, is accessible everywhere in the world).
By doing so, and therein is the importance of the court ruling, the EGC took into account the evidence of disclosure having occurred outside of the European Union in order to rule on the invalidity of a community model.

The company Crocs, Inc. could have avoided its model being invalidated if it had managed to prove that the invoked evidence did not constitute disclosure, i.e. that its model could not reasonably have been known, according to normal business practices in the industry concerned, in this case, shoe manufacturing and sales professionals operating within the European Union.

The EGC specified elements that might have convinced the Court not to retain disclosure of the community model: proof that the website was not – in practice – consulted, or very little, by users from the EU; proof that the boat show had not been attended by exhibitors or participants from the EU; proof that the distribution and sales network of the clogs to which the disputed model or design had been applied was not, in actual fact, operational and that no orders had been placed via that network.

This ruling strongly reminds the caution that creators and right holders must exercise before any disclosure of their product. The actual international means of communication inevitably leads to more easily take into account evidence having occurred outside of the European Union even when protection had been requested for the EU territory.