Page 1 24 November 2009 LLM in Intellectual Property Law – University of Turin  Impact of EC Law on National Practices: the Example of France

Page 2 1.May Legentil oppose its French design rights against the transit through France of the El Bandido spare parts? n Spare parts protection by design law varies from country to country in the European Union:  Possible in France  Not possible in Italy or Spain  Importation in France of spare parts legally manufactured by a third party in Italy or Spain may amount to design infringement if the part is covered by a French registered design. BUT: Is there design infringement when the spare parts merely transit through France from and to countries where they can be manufactured or marketed lawfully? n Former French case law: YES n EC Commission sued France for unduly restricting the free movement of goods

Page 3 1.May Legentil oppose its French design rights against the transit through France of the El Bandido spare parts? CJCE 26 September 2000, C-23/99, Commission/France « Since the manufacture and marketing of the product are lawful in the Member States where those operations take place and transit does not form part of the specific subject- matter of the design right in the Member State where transit takes place, it must be concluded that the impediment to the free movement of goods caused by the product's detention under customs control in the latter Member State in order to prevent its transit is not justified on grounds of the protection of industrial property. »  The French IP Code was amended accordingly.  Legentil may not oppose its design rights against the transit of El Bandido’s spare parts.

Page 4 2.In order for the use of « Buggy Chic » to be held as infringing Legentil’s rights on the trademark « Chic & Nature », is it necessary to prove the existence of a likelihood of confusion? French Intellectual Property Code n L 713-2: « The following shall be prohibited, unless authorized by the owner: a) The reproduction, use or affixing of a mark (…) or the use of a reproduced mark for goods or services that are identical to those designated in the registration (…) ».  No requirement of a likelihood of confusion n L 713-3: « The following shall be prohibited, unless authorized by the owner, if there is a likelihood of confusion in the mind of the public: a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration; b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration ».  Requirement of a likelihood of confusion

Page 5 2.In order for the use of « Buggy Chic » to be held as infringing Legentil’s rights on the trademark « Chic & Nature », is it necessary to prove the existence of a likelihood of confusion? EC Directive No. 89/104 of 21 December 1988 on Trademarks (now codified by D. No. 2008/95 of 22 October 2008 ) Article 5 - Rights conferred by a trade mark. «1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: a)any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; [  No requirement of a likelihood of confusion] b)any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark.» [  Requirement of a likelihood of confusion]

Page 6 2.In order for the use of « Buggy Chic » to be held as infringing Legentil’s rights on the trademark « Chic & Nature », is it necessary to prove the existence of a likelihood of confusion? Former French case law « Reproduction » (no likelihood of confusion required) covers the following situations:  Slavish reproduction Arthur / Arthur AND  Reproduction of a distinctive element of a compound mark (partial reproduction) / Arthur  Reproduction of a mark together with another element deemed not to affect the identity of the mark (reproduction with ineffective addition) Arthur / Arthur & Félicie  A combination of both (partial reproduction with ineffective addition) / Arthur & Félicie

Page 7 2.In order for the use of « Buggy Chic » to be held as infringing Legentil’s rights on the trademark « Chic & Nature », is it necessary to prove the existence of a likelihood of confusion? CJCE 20 March 2003, C-291/00, Arthur & Félicie « Article 5(1)(a) of the directive must be interpreted as meaning that a sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer. »  Now, under French law, the last three situations mentioned above would require the existence of a likelihood of confusion.  Chic & Nature / Buggy Chic (partial reproduction with addition): infringement would require a likelihood of confusion as the signs are not strictly identical

Page 8 3.Issue of the qualification of use of a trademark as a company or trade name n L 713-2: « The following shall be prohibited, unless authorized by the owner: a) The reproduction, use or affixing of a mark (…) or the use of a reproduced mark for goods or services that are identical to those designated in the registration (…)». n L 713-3: « The following shall be prohibited, unless authorized by the owner, if there is a likelihood of confusion in the mind of the public: a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration; b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration ». n Former French case law: use of a trade mark as a company or trade name infringes the mark if the activity covered by such name is similar to the products or services covered by the mark.

Page 9 3.Issue of the qualification of use of a trademark as a company or trade name CJCE 11 September 2007, C-17/06, Céline « Where the use of a company name, trade name or shop name is limited to identifying a company or designating a business which is being carried on, such use cannot be considered as being ‘in relation to goods or services’. [The situation is however different where the third party uses that sign in such a way that a link is established between the allegedly infringing sign and the goods marketed or the services provided by the third party.] »  In order to sue Chic&Green for trade mark infringement, Legentil would have to prove: (i) That consumers would extend the name of the company Chic&Green to the products it sells; (ii) That Chic&Green is likely to cause confusion with the trade mark Chic & Nature

Page The definition of « trademark with a reputation » n L 713-5: « Any person who uses a mark with a reputation for goods or services that are not similar to those designated in the registration shall be liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark ». n Former French Case Law: a « mark with a reputation » is a mark which is known by a very large part of the general public.

Page The definition of « trademark with a reputation » CJCE 14 September 1999, C-375/97, General Motors « Article 5(2) of the Directive is to be interpreted as meaning that, in order to enjoy protection extending to non-similar products or services, a registered trade mark must be known by a significant part of the public concerned by the products or services which it covers. »  According to this definition, the standard of proof is lower than it was under French former law.  As the Chic & Nature trademark is well known by the public concerned by electrical buggies, it may be considered as a « mark with a reputation » even though it is not known amongst the general public.

Page The imitation of a trademark with a reputation L 713-5: « Any person who uses a mark enjoying repute for goods or services that are not similar to those designated in the registration shall be liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark ». Former French Case Law: Ch. Com., 29 juin 1999, Olymprix: « Article L enables the owner of a trade mark with a reputation to prevent the use of such mark but not the use of a similar sign ».

Page The imitation of a trademark with a reputation CJCE 23 October 2003, C-408/01, Adidas/Fitness World « (…) a Member State, where it exercises the option offered by the Directive [of granting specific protection to marks with a reputation], is bound to grant the specific protection in question in cases of use by a third party of a later mark or sign which is identical with or similar to the registered mark with a reputation, both in relation to goods or services which are not similar and in relation to goods or services which are identical with or similar to those covered by that mark. »  French case law changed in consequence: Ch. Com. 12 juillet 2005, Must « [In view of Adidas/Fitness World], it results [from article L 713-5], that the use of a sign which is identical or similar to mark enjoying a reputation for products or services which are not similar to those covered by the mark, shall render the user liable under civil law if such use is likely to cause a prejudice to the owner of the mark or if such use constitutes unjustified exploitation of the mark.»  Legentil may sue Chic&Green on the ground of L713-5 even though the signs are not identical.

Page 14 Gide Loyrette Nouel Association d'avocats à responsabilité professionnelle individuelle 26, cours Albert 1er Paris - France Tél.+33 (0) Fax+33 (0) Présentation par Arnaud Michel, Avocat associé Abu Dhabi Alger Belgrade Bruxelles Bucarest Budapest Casablanca Dubai Hanoi Hô Chi Minh Ville Hong Kong Istanbul Kiev Londres Moscou New York Paris Pékin Prague Riyad St-Pétersbourg Shanghai Tunis Varsovie