Pressemitteilung

C-598/14 P;

Rechtskräftig: unbekannt!

The Court of Justice confirms that the company Forge de Laguiole may oppose the registration, at EU level, of the trade mark Laguiole in the area of, inter alia, knives and cutlery

Leitsatz des Gerichts:

By contrast, the company Forge de Laguiole may not oppose the registration of the trade mark Laguiole in areas in which it does not actually pursue a business activity

Click here to the full text of the judgement

Mr Gilbert Szajner applied in 2001 for registration of the EU trade mark LAGUIOLE for a large number of goods and services, which was granted to him in 2005 by EUIPO (European Union Intellectual Property Office). Forge de Laguiole, a French company known for its knives, applied for cancellation of the mark LAGUIOLE. Forge de Laguiole argues that, under French law, its business name, which is of more than merely local significance, entitles it to prohibit the use of a subsequent trade mark. In 2011 EUIPO granted Forge de Laguiole’s application on the ground of the likelihood of confusion between the name of that company and the mark LAGUIOLE. It accordingly declared the mark LAGUIOLE invalid (except in relation to telecommunication services). Mr Szajner brought an action before the General Court of the EU seeking to have EUIPO’s decision annulled.

By judgment of 21 October 2014,¹ the General Court partially annulled EUIPO’s decision. It confirmed the cancellation of the mark LAGUIOLE only for goods in certain sectors, such as knives and cutlery.² However, the General Court decided, contrary to EUIPO, to maintain the mark LAGUIOLE for the other goods and services claimed, taking the view that Forge de Laguiole had not actually pursued business activities in those areas. Dissatisfied with the judgment of the General Court, EUIPO, supported by Forge de Laguiole, brought an appeal before the Court of Justice seeking to have the judgment of the General Court set aside.

By today’s judgment, the Court of Justice confirms the judgment of the General Court.

The Court finds, first of all, that, in assessing the protection granted to the business name of company by the national law of a Member State, the General Court must apply the rules of nationa law as interpreted by the national courts at the time at which it delivers its decision. It must therefore also be able to take into consideration a decision originating from a national court³ taken after the decision of the Board of Appeal of EUIPO has been adopted. It follows that the General Court acted correctly in finding that, under the applicable French law, the protection that Forge de Laguiole may derive from its business name covers only the business activities actually pursued by that company.

The Court then goes on to express the view that, even though the General Court did not first explicitly mention the criteria on the basis of which the activities actually pursued by Forge de Laguiole had to be determined, it expressly took account, when examining those activities, not only of the nature of the goods concerned, but also of their intended use, purpose, customers and distribution channels.

The Court accordingly concludes that the General Court correctly determined the business activities actually pursued by Forge de Laguiole and was thus right to limit the cancellation of the mark LAGUIOLE to the goods covered by those activities (namely to goods falling within certain sectors, such as knives and cutlery).

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NOTE: EU trade marks are valid throughout the EU and co-exist with national trade marks. Applications for registration of an EU trade mark are sent to EUIPO. Actions against its decisions may be brought before the General Court.

NOTE: An appeal, on a point or points of law only, may be brought before the Court of Justice against a judgment or order of the General Court. In principle, the appeal does not have suspensive effect. If the appeal is admissible and well founded, the Court of Justice sets aside the judgment of the General Court. Where the state of the proceedings so permits, the Court of Justice may itself give final judgment in the case. Otherwise, it refers the case back to the General Court, which is bound by the decision given by the Court of Justice on the appeal.
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¹Case T-453/11 Szajner v OHIM.
²Namely the goods ‘hand tools and implements (hand-operated); spoons; saws, razors, razor blades; shaving cases; nail files and nail nippers, nail-clippers; manicure sets’, ‘paper-cutters’, ‘corkscrews; bottle-openers’, ‘shaving brushes, fitted vanity cases’, ‘cigar cutters’ and ‘pipe cleaners’.
³Such as, in the present case, the judgment of the French Court of Cassation of 10 July 2012.