The Laguiole Trademark Saga: Victory Can Be A Double-Edged Knife

Author:Mr Claude-Étienne Armingaud and Olivia Roche
Profession:K&L Gates

The European Union Court of Justice confirmed the intellectual property rights owned by the French company "Forge de Laguiole", but solely in areas in which it pursued an actual business activity.

A decision1 dated 5 April 2017 of the European Union Court of Justice ("EUCJ") put an end to the long-standing series of court decisions about the Laguiole trademark before the European Union jurisdictions ("EU Jurisdictions"), on which relied the right for French company "Forge de Laguiole" to keep using its business name. This decision also gave the EUCJ the opportunity to clarify the application of national case law by the EU Jurisdictions within the framework of proceedings based on Article 8 (4) of Regulation No 207/20092 (the "Regulation").

  1. The "Laguiole legal saga" before the EU Jurisdictions

    The French company "Forge de Laguiole" is internationally renown for its manufacturing of knives and cutlery.

    In 2001, Mr Gilbert Szajner, a French individual, applied for the registration of the European Union trademark "LAGUIOLE" (the "Trademark") before the European Union Intellectual Property Office ("EUIPO"). This Trademark was registered in 2005 and covered a broad spectrum of goods and services, including knives and cutlery.

    Subsequently, Forge de Laguiole sought the cancellation of the Trademark before the EUIPO on the basis of its prior business name, which is of more than "merely local significance" and could as such entitle Forge de Laguiole to prohibit the use of a subsequent trademark, on the ground of Article 8(4) of the Regulation.

    In 20113, the First Board of Appeal of the EUIPO declared the Trademark partially invalid in view of the likelihood of confusion with the business name of the French company. The Trademark had therefore been cancelled for all the goods and services it covered, except for the telecommunication services in class 38.

    Mr Szajner sought to overturn the EUIPO's decision before the General Court of the European Union (the "General Court").

    By judgment dated 21 October 20144, the General Court confirmed the cancellation of the Trademark but only for goods and services related to the business activities actually pursued by Forge de Laguiole. Contrary to the EUIPO, the General Court maintained the Trademark for the all other goods and services. Considering that the judgement of the General Court infringed, inter alia, Article 65 (2) of the Regulation, the EUIPO, supported by Forge de Laguiole, brought an appeal before...

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