French company may not oppose trade mark registration in areas it does not pursue business

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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 argued 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. 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.

In its judgment, the Court of Justice confirmed the judgment of the General Court.

The court found, first of all, that, in assessing the protection granted to the business name of a company by the national law of a member state, the General Court must apply the rules of national 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 court 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 went 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 concluded 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).