France: Does Kadjar refer to the Iranian dynasty or to the new Renault crossover?

August 24 2016

Karim Kadjar, an actor and descendant of the Iranian Kadjar dynasty which reigned over Iran from 1786 to 1925, did not appreciate the adoption by the French company Renault of the name Kadjar as a trade mark and keyword on internet search engines for designating its new crossover utility vehicle.

Indeed, in January 2015, Renault launched its new crossover with French and European trade marks for Kadjar in class 12 for "vehicles".

Consequently, Karim Kadjar filed a cancellation action against the French trade mark Kadjar (number 144065320) before the Tribunal de Grande Instance (TGI) in March 2015 based on Aticle L711-4 of the French IP Code which states that "a mark may not be adopted if it infringes earlier rights including… g) the personality rights of a third party including his surname…" and on provisions of general civil law (Articles 9 and 1382 of the Civil Code).

The question is whether there is a risk of confusion or a risk of association for the relevant public, which is the average French consumer of vehicles, between the trade mark and this family name and if the surname Kadjar was famous when the trade mark was filed.

The TGI issued a decision on June 9 2016 considering that, on the filing date of the trade mark, despite the important volume of evidence, the family name has a limited reputation in France, except for a very specific public interested in Iranian history.

Therefore, in the absence of reputation of this family name, there is no likelihood of confusion for the relevant consumer.

Is this trade mark deceptive ?

Karim Kadjar considers that the trade mark misleads the consumer, who may consider that the goods are manufactured in Iran or with the heirs' authorisation. The French TGI also rejects this argument, considering that there is no risk of confusion, and therefore the consumer cannot be deceived, due to the lack of notoriety of this family name.

At this stage, Renault can continue the sale of its Renault Kadjar.

Nevertheless this is a reminder that it is important to conduct searches and check the possible notoriety of a family name before adopting a new trade mark consisting of a family name.