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Europe: How to cut a trade mark

These days some restaurants offer a selection of knives to choose from. On such a tray you might find a Laguiole knife. Laguiole knives are produced in the small village of Laguiole, located in the Massif Central region of France, thus "Laguiole" originally is neither a trade mark, nor a company name. However since the name Laguiole has become associated with high-end traditional knives, the interest in the protection of the word Laguiole has been growing accordingly. It is not your typical trade mark history and is the reason why the appeal decision of April 5 from the CJEU (C-598/14) caught my eye.

By its appeal the EUIPO (supported by the knives company Forge de Laguiole SARL) sought to set aside the ruling of the General Court dated July 10 2012 in which it found the trade mark invalid for knives and cutlery, because there was a likelihood of confusion between the business name Forge de Laguiole and the trade mark Laguiole only in respect of goods that corresponded to the activities actually pursued under that business name on the date of the application for registration of the contested mark.

EUIPO (by the second part of its second ground of appeal) criticised the criteria used by the General Court to determine the business sectors of Forge de Laguiole at the time of the EU trade mark registration in 2001. EUIPO argued that the General Court defined the limits of protection for a business name by referring exclusively to its own case law, which in addition concerned the use of earlier marks instead of earlier trade names (judgment of February 13 2007, Mundipharma v OHIM – Altana Pharma (RESPICUR) (T256/04). According to EUIPO the scope of protection – in view of Article 8(4) of the Trade Mark Regulation and French law – should have been determined taking into account the intended use and purpose of the goods marketed by the proprietor of the earlier business name too.

The Court decided against the EUIPO noting that the General Court, when examining the business activities pursued by Forge de Laguiole, did not in any way generally apply its case law by analogy. It merely cited its case law on the use of earlier trade marks in order to explain its assessment that the marketing of forks did not make it possible to establish a business activity in the entire tableware sector, but only in a business sector relating to forks and spoons. Furthermore the Court finds it clear from the decision of the General Court that it certainly did not solely rely on the nature of the goods in its examination of the likelihood of confusion.

Not so much cutting edge, but all about close reading.

Annelies de Bosch Kemper

V.O.Carnegieplein 5, 2517 KJThe HagueThe NetherlandsTel: +31 70 416 67 11Fax: +31 70 416 67 99info@vo.euwww.vo.eu

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