Back on the Olympics: an example of interim measures ordered against a company that is not a partner of the Paris2024 Olympic Games, on the grounds of infringement of the Olympic properties and ambush marketing.

As might be expected, the Organising Committee for the Olympic and Paralympic Games (COJOP) brought a number of cases of infringement of the Olympic properties and ambush marketing before the interim Judge this summer. The order issued on August 19th, 2024 is an emblematic illustration of this: LYCAMOBILE, which is in the business of marketing mobile phone services, made several publications on the internet and on the Facebook and Instagram social networks that referred, directly or indirectly, to the Olympic Games, even though it is not an official partner of the event, unlike its competitor ORANGE.

Despite several requests from COJOP, LYCAMOBILE did not put an end to the litigious acts, and was therefore summoned in summary proceedings, on the dual grounds of infringement of the Olympic properties and parasitism by “ambush marketing”.

Firstly, the Court logically found that the infringement of the Olympic properties was likely, giving rise to liability on the part of LYCAMOBILE. In particular, LYCAMOBILE had used the terms “Olympic”, the Olympic rings, “Paris2024”, the symbol of the Paris2024 Olympic Games and the expression “Olympic Games” in several communications, in breach of Article L. 141-5 of the French Sports Code, which establishes an autonomous system for protecting the Olympic properties and sanctions their unauthorised use.

Secondly, the Court sanctioned LYCAMOBILE’s use of the expression “gold medal offer”, and of photographs of a swimmer in a swimming pool, medals and a French supporter, used during the Paris2024 Olympic Games. While LYCAMOBILE had invoked the use of the term “Olympic” in its everyday meaning and in the context of informative publications, the judges noted their “essentially commercial” purpose. They therefore ruled that these elements demonstrated “a desire on the part of LYCAMOBILE to position itself in the wake of the Paris2024 Olympic Games and to benefit from their reputation without untying its purse, thereby incurring its liability without serious dispute”.

The Court therefore ordered the withdrawal of the disputed publications, subject to a fine, and imposed a prohibition order, also subject to a fine. LYCAMOBILE was also ordered to pay COJOP the provisional sum of 20,000 euros.

High Court of Paris, Service of Interim Proceedings, August 19th, 2024, No.24/55487

End of the legal saga of the two stripes pitting ADIDAS against Isabel Marant and Sandro

By two recent rulings dated June 24th, 2024, the French Supreme Court dismissed the appeals lodged by ADIDAS against two appeal rulings handed down on November 2nd, 2022 by the Paris Court of Appeal.

ADIDAS, as owner of the famous three-stripes trademark, accused the companies that own the Isabel Marant and Sandro trademarks of using the parallel stripes on clothing. In 2018, ADIDAS brought an action for infringement and unfair competition against these two companies. ADIDAS argued that the use of a two-stripe design by fashion brands imitated its world-famous three-stripe brand, creating a risk of confusion among consumers and damaging the reputation of the ADIDAS brand.

In 2020, the Paris Court of First Instance dismissed the claims for infringement by imitation but found that Isabel Marant had damaged the reputation of the ADIDAS trademarks. On November 2nd, 2022, in two rulings, the Paris Court of Appeal confirmed the absence of infringement and this time rejected any infringement of the ADIDAS trademark.

In these rulings, the Court reiterated that the repute of a trademark is assessed on the basis of a number of established criteria, such as “the age of the trademark, its commercial success, the geographical extent of its use and the size of the advertising budget devoted to it (…)”, and held that, in this case, the ADIDAS trademark in question is indeed a reputed trademark.

Infringement of a reputed trademark is established if the relevant public simply makes a link between the sign and the said trademark, without proof of a likelihood of confusion being required. In this case, although the link between the two stripes and the reputed trademark could be established, it was not sufficient to establish infringement of the reputed trademark, as ADIDAS had failed to prove that it had unduly benefited from the repute of its trademark or that it had suffered any damage.

The Court of Appeal considered that ADIDAS had not demonstrated that Isabel Marant and Sandro had followed in the wake of its reputed trademark in order to take unfair advantage of its strong appeal. Sandro and Isabel Marant only used the two stripes as an ornamental motif, as part of a fashion trend, to sell articles under their respective brands, which enjoy their own power of attraction.

Finally, ADIDAS has not established either a change in the economic behavior of the average consumer or a serious risk that such a change will occur in the future.

Cass. com., June 26th, 2024, n° 23-12.640 ; Cass. com., June 26th, 2024, n° 23-12.639.

 
Action for invalidity of a trademark containing a date falsely referring to the age of the owner company: the assessment of its deceptiveness justifies referring the question to the CJEU for a preliminary ruling

The assessment of the deceptiveness of a trademark continues to generate debates. Following the question referred to the CJEU for a preliminary ruling on the deceptiveness of a trademark containing a patronymic name (Cass. Com., February 28th, 2024, No.22-23.833 – see IP Newsletter June 2024), the Court of cassation referred a new question for a preliminary ruling, this time on the deceptiveness of a trademark claiming a date.

This question arises in the context of a dispute between the luxury leather goods manufacturers FAURE LE PAGE and GOYARD ST-HONORE. In 2009, FAURE LEPAGE acquired an initial FAURE LEPAGE trademark from SAILLARD, which had itself registered it in 1989. At the time of filing, SAILLARD was the sole shareholder of MAISON FAURE LEPAGE, which had existed since 1716 and had been dissolved in 1992. GOYARD ST-HONORE criticised FAURE LE PAGE for having registered two “Fauré Le Page 1717” trademarks with the INPI in 2011, even though the company had been registered since 2009. GOYARD ST-HONORE thus accuses it of misleading consumers by claiming a seniority that is not its own, as FAURE LE PAGE has no connection with the historic company MAISON FAURE LE PAGE mentioned above.

After several rulings in 2016 and 2018, the Court of Appeal, on referral after cassation, declared the trademarks in dispute invalid, considering that the date 1717 leads the public “to believe in a continuity of operation since 1717, as well as in a transmission of know-how from the former MAISON FAURE LE PAGE to the company FAURE LE PAGE, a guarantee, in the mind of the public concerned, of the quality of the products on which these trademarks are affixed”. These trademarks were therefore deemed to be misleading, on the basis of former Article L. 711-3 of the French Intellectual Property Code (now L. 711-2 8°).

The Court of Cassation, hearing a new appeal, did not rule on this question, which in its view deserves to be referred to the CJEU for a preliminary ruling, in order to clarify the interpretation to be given to the European provisions on which Article L. 711-2 8° is based. According to these provisions, a trademark may be declared invalid if it is “able to mislead the public, in particular as to the nature, quality or geographical origin of the goods or services”.

On this basis, must the misleading or deceptive nature of a trademark relate to the actual characteristics of the product or service or, beyond that, may it relate to the qualities of the company owning the trademark concerned? This is the question that will have to be decided in order to determine whether the age claimed by FAURE LEPAGE in its trademarks, which falsely conveys to the public the idea of ancient know-how and continuity of operation since 1717, is misleading and should lead to the invalidation of these trademarks.

In this case, the impact of this type of claim in a trademark, particularly in the luxury sector, is real and can influence consumers’ purchasing decisions, giving the owner a competitive advantage. A trademark claiming seniority should therefore not be allowed to distort free competition.

Cass. com., June 5th, 2024, No.22-11.499

an a car headlight be registered as a three-dimensional trademark?

In September 2012, Volvo Personvagnar AB applied to the EUIPO for registration of a three-dimensional trademark representing a car headlight design tapering to the right and incorporating a clear, geometric graphic LED shape resembling a horizontal Y.

The examiner and the Board of Appeals rejected the application for registration of the three-dimensional trademark in question on the ground of lack of distinctiveness.

On June 26th, 2024, the European Court of First Instance cancelled the refusal to register the trademark in question, holding that “the headlights in question differ significantly from other shapes of headlights” and that the three-dimensional trademark in question was indeed distinctive.

In this ruling, the Court recalls that in the case of a three-dimensional trademark composed of the shape of the product itself, “only a trademark that significantly diverges from the norm or custom of the sector is likely to fulfill its essential original function”.

In this case, the Court notes that the horizontal Y shape is neither common nor customary for products in the automotive sector. In addition, this particular appearance constitutes a sufficiently distinctive shape to differentiate it from other LED headlamps on the market. Finally, the overall aesthetic result is such as to attract the attention of the public concerned.

More generally, the Court considers that headlights have become distinctive as essential elements of vehicle appearance, enabling consumers to differentiate between the models of different manufacturers on the market: “the design of the headlights is important to emphasize the commercial origin […] they can be perceived at greater distances, in daylight and in darkness”.

The Court of First Instance thus revoked the decision to refuse registration of the three-dimensional mark at issue, considering the latter to be, as a whole, endowed with the requisite minimum distinctive character within the meaning of Article 7(1)(b) of Regulation 2017/1001.

Trib. EU, 7th Ch. 26 June 2024, Case T-260/23, Volvo Personvagnar AB v/ EUIPO

Lack of inventive step of a pharmaceutical patent in the presence of a phase 3 clinical trial

In a judgment issued on September 6th, 2024, the High Court of Paris declared invalidity of French part of patent EP 2 493 466, relating to the palliative use of cabazitaxel in the treatment of metastatic prostate cancer after failure of hormone deprivation therapy and subsequent failure of a first docetaxel-based therapy. Companies ACCORD HEALTHCARE, which specialise in the production and sale of generic medicines and were accused of infringing this patent, brought a parallel action for invalidity of French part of this patent. They based their claims on insufficiency of description, lack of novelty and inventive step.

On insufficiency of description, the Court, noting the presence in the patent at issue of data proving the existence of a favourable therapeutic effect of cabazitaxel demonstrated according to several criteria, and of elements making it possible to avoid foreseeable failures in the realisation of the invention, deduced that the invention at issue was sufficiently described. ACCORD HEALTHCARE’s argument is therefore rejected.

The Court is also careful to ensure consistency between the assessment of insufficiency of description and that of novelty, in order to “give a uniform meaning to the invention in both cases”: while, in order to consider an invention sufficiently described, the therapeutic effect does not have to be demonstrated but only credible and executable, this technical effect must be assessed in the same way in the prior art for the purposes of ruling on novelty. In other words, the presence in the prior art of a credible and executable technical effect will be sufficient to consider that the invention is not new, without it being necessary for the technical effect in question to be actually demonstrated in the prior art. However, it rejects ACCORD HEALTHCARE’s claims for lack of novelty, in the absence of “disclosure of prior art reflecting the therapeutic effect that is the subject of claim 1” in the “Tropic” phase 3 clinical trial that served as the basis for the analysis.

The Judges also assessed the impact of this phase 3 clinical trial with regard to the inventive step criterion. They first recalled the case law trends in force in France and at the EPO and noted the existence of divergences in the consideration of clinical trials for this criterion.

While for the EPO, a phase 3 clinical trial in itself creates a reasonable hope of success for the person skilled in the art, the situation is different for French Judges, for whom “a clinical trial does not in itself destroy the inventive step but is of such a nature as to influence and reinforce the lessons learned from the rest of the prior art”. The French approach is therefore more nuanced and casuistic.

In the present case, the Court took account of the existence of various clinical trials, and in particular the phase 3 “Tropic” clinical trial, to deduce that there was a chance that cabazitaxel could be effective against docetaxel-refractory prostate cancer. It then deduced from its analysis of the data in the prior art that “the person skilled in the art would have considered that, compared with mitoxantrone, which he knew had only a palliative effect in first line and was not even approved for use in second line, the experimentation with cabazitaxel in second-line treatment, which had been ongoing in a phase 3 trial for more than three years, had a reasonable chance of showing a favourable effect, including a (moderate) increase in survival”, to declare all the claims of the patent in dispute invalid.

It is likely that this judgement will be appealed, allowing the Court of Appeal to rule on the question of the impact of phase 3 clinical trials on the validity of a patent.

High Court of Paris, 3rd Chamber – 2nd Section, September 6th, 2024, No.21/06416