For the past 10 years, Goyard and Fauré Le Page have been locked in a multi-faceted dispute over the FAURÉ LE PAGE PARIS 1717 trademarks.
In a new twist, the Cour de Cassation (French Supreme Court), hearing the case for the second time, referred questions to the Court of Justice of the European Union (CJEU) for a preliminary ruling on the notion of deceptiveness of a trademark as a ground for invalidity.
On November 23, 2021, the Paris Court of Appeal ruled that the FAURÉ LE PAGE PARIS 1717 trademarks were invalid on the grounds that the element “1717” gave the impression that this was the year in which Fauré Le Page was founded, which is likely to mislead the public, whereas the current owner of the FAURÉ LE PAGE PARIS 1717 trademarks only existed since 2009. In fact, in 2009, it acquired the FAURÉ LE PAGE PARIS 1717 trademark and not the business and was therefore distinct from the Maison Fauré Le Page, which was created in the 18th century.
The Cour de cassation noted that there was no precedent for determining whether factors other than the nature, quality or geographical origin of the goods or services covered by the registration were of such a nature as to deceive the public as to their characteristics. It considers that the deceptive character of a trademark could also relate to the characteristics of the company that owns it, particularly its age.
The Cour de cassation therefore asks the CJEU whether:
Article 3(1)(g) of Directive No 2008/95/EC must be interpreted as meaning that a sign which mentions a whimsical date in order to convey information about the age, reliability and know-how of the manufacturer, and hence about non-material characteristics of the goods, may constitute actual deception or a sufficiently serious risk of deception of the consumer.
Should the CJEU answer in the negative, an additional question with two branches is posed.
This case highlights the complexity of the notion of deceptiveness, and above all calls for vigilance on the part of companies that relaunch old trademarks by registering trademarks composed of an old date, when the goodwill has not been transferred.
About the author(s)
Marianne is an Intellectual Property lawyer in Paris. She is a recognised trial lawyer in national pan-European and international patent, trademark, and trade secrets disputes in the electronics and telecommunications, pharmaceutical, chemistry, and consumer products sectors.
Mathilde is an intellectual property senior associate, who focuses her practice in multiple areas, including patents, trademarks, designs, trade secrets, copyright, both in litigation and non-litigation matters.
