Case LAGUIOLE:  A war with knives decided by the Court of Cassation and the Court of Justice of the European Union

In a judgment of 4 October 2016, the Court of Cassation upheld the LAGUIOLE Commune, located in the Aveyron, and renowned worldwide for its tradition of cutlery, which was fighting against the use of the name LAGUIOLE, Knives manufactured outside the LAGUIOLE Commune itself (mainly in China and Pakistan).

This case dates back to 1993, when Mr. Gilbert SZAJNER, resident of Val-de-Marne, registered LAGUIOLE Trademarks in France to sell knives and sharp instruments, but also clothes, household linen, lighters, carpets etc.

Since that date, the municipality of LAGUIOLE maintains that its name constitutes an indication of origin for certain categories of products and that it is being despoiled because of numerous trademark applications affixed to products not originating from the municipality.

In 2010, the latter assigned Mr. Gilbert and Louis SZAJNER and a company known as LAGUIOLE, holders of 27 French, Community and international word and semi-figurative Trademarks bearing the name "LAGUIOLE", with some of the representation of a bee, but also their licensees, for commercial practices misleading and parasitism, as well as the invalidity of marks and, in the alternative, forfeiture of trademark rights.

On April 4, 2014, the Court of Appeal of Paris dismissed the municipality of LAGUIOLE of all its requests.

But on 4 October 2016 the Court of Cassation partially quashed the judgment of the appellate courts and declared admissible the application for annulment of the Trademarks at issue, brought by the municipality of LAGUIOLE against Mr. Gilbert and Louis SZAJNER, and the company LAGUIOLE, with regard to the fraud and possible bad faith of their holders.

Thus, for the first time, the Court of Cassation judges considered that the Court of Appeal should have sought "whether the filing of a set of marks comprising the name "Laguiole", sometimes combined with the emblematic design of a bee, to designate many products and services not linked to this municipality, was not part of a commercial strategy aimed at depriving it or its current or potential administrators of the use of the name necessary to Their activity ", in order to characterize the bad faith of depositors, with as a corollary the cancellation of their Trademark.

The Court of Cassation also refers to the question whether or not there are deceptive marketing practices and invites the judges of the Court of Appeal to examine whether the use by a third party of the name of the municipality of LAGUIOLE, which is known by 47% of a representative sample of the French, is likely to influence the buying decision of the consumer, regardless of whether it is known for these knives and / or cheese.

In other words, this means that the validity of the Trademarks of the attacked holders remains in abeyance, pending the forthcoming decision of the Paris Court of Appeal of Reference which will have to rule on the existence Or not of deceptive marketing practices, and, secondly, on the validity of the Trademarks at issue.

If the licensed LAGUIOLE trademarks were to be invalidated, would the licenses themselves (in 2014, Mr Gilbert SZAJNER grant licenses to no fewer than 22 companies) be revoked with retroactivity?

A first French judgment in 1999 had given to a historical company of the municipality of the commune of LAGUIOLE, that is LA FORGE DE LAGUIOLE, the right to designate its knives under the name LAGUIOLE, considering that the term was not a trademark but a reference to the shape of the knife.

Today, the city of LAGUIOLE has a new victory, this time at an European level, since the Court of Justice of the European Union comes in its decision of 5 April 2017 to cancel the Trademark LAGUIOLE filed by the businessman, of Val-de-Marne: LA FORGE DE LAGUIOLE can no longer be prosecuted for Trademark infringement as regard to knives but now also as regard to other products it manufactures: forks, spoons or corkscrews.

However, the European judgment which authorizes LA FORGE DE LAGUIOLE to call its products LAGUIOLE does not prevent others from doing the same. The outcome of the French procedure remains therefore decisive. To be continued...