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.
de Bosch Kemper
Carnegieplein 5, 2517 KJ
Tel: +31 70 416 67 11
Fax: +31 70 416 67 99