French Trademark Law provides for the coexistence of a registered
trade mark and an identical surname used in the course of trade. To
protect against fraud, the latter can use its surname, which is an
attribute of its personal rights, as a company name or trade name,
excluding trade mark applications. The conditions are good faith and
lack of a likelihood of confusion. The coexistence is fair if all
precautions are taken against confusion and taking advantage of existing
trade marks.
In wine, such clashes are common. The case law has specified the
conditions to excluding infringement. The good faith of the use of a
surname identical to a registered mark is recognised when the name acts
personally in the trade as director and majority partner in the company.
In a recent case, Henriot, the first-instance judge ruled for
bad faith but the appeal judge condemned the lack of its demonstration
and rejected the counterfeiting of trade marks. For the first judge,
precautions were not sufficient to avoid the confusion since the
adjunctions were inoperative and led to a link with the trade marks,
given the parties produced wine in the same geographical zone.
But on appeal, it was said that the dominant position of the surname
in the company name or trade name of the company is acceptable if no
confusion with prior trade marks exists because of the position of the
director and his function of control and direction in the companies. The
confusion with prior rights is avoided by predominant adjunctions, such
as the first name, geographical indication on the goods and their
presentation.
Sometimes, however, names are unfairly used as unregistered trade
marks. There is also no imitation here if sufficient precautions are
taken. In particular, registered marks for wines with notably figurative
elements such as a flange, heraldic symbol, volute or rectangular base
are different from straightforward surnames used only with adjunctions
of first names). This appears questionable since such figurative
elements should be banal for wines.
Lastly regarding parasitism, the plaintiff, having previously
recognised in a correspondence the lack of confusion with its trade
marks, could not afterwards claim imitation.
For well-known wines, therefore, the consumer gives more attention to
a comparison of the goods and is able to distinguish between trade
marks composed of surnames. The adjunction of a first name is sufficient
to differentiate.
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