International report - Laguiole: daggers drawn between tradition and trademark law 23 Jan 13
Baker McKenzie - France
Several French cities, including Deauville and Paris, have recently taken legal action against the commercial use of their names and their registration as trademarks. Most recently, the town of Laguiole found out the hard way how important trademark protection can be.
Laguiole is a town of 1,200 residents located in the Aveyron department in southern France. It is famous for its cheese (protected under a French appellation d'origine contrôlée (AOC) and a European protected designation of origin (PDO)), and most commonly as the original place of manufacture of France's most famous knife: the Laguiole knife. The high-quality pocket knife is characterised by a long, pointed blade and traditionally a handle made of cow horn. It was created around 1827 by a local named Pierre-Jean Calmels, most probably inspired by the Andalusian Navaja. According to legend, the drawing of a bee (or a fly) on the knife's clasp is an imperial symbol which was awarded by Napoleon to the villagers for acts of bravery.
Production of this knife started in Laguiole in the 19th century, but was re-launched in Laguiole in 1987 by hotel and restaurant owners the Costes brothers, with the help of French designer Philippe Starck.
However, the rights over the name "Laguiole" were never secured by the municipality or by the manufacturers of the knife and, since the protection of the AOC or PDO does not apply to manufactured goods, the name was left with no protection.
In 1993 businessman Gilbert Szajner seized this opportunity and registered LAGUIOLE as a trademark in a substantial number of classes. Szajner also created a company, Laguiole SA, in order to license the trademark. The LAGUIOLE trademark is now registered in many countries, including as a Community trademark and as an international trademark, and is licensed for a broad variety of products, including linen, lighters, corkscrews and barbecues.
In 1997 the town of Laguiole took legal action against Szajner before the Paris Court of First Instance and obtained the cancellation of several LAGUIOLE trademarks. However, the Paris Court of Appeal overturned this decision and stated that LAGUIOLE did not constitute an indication of source liable to mislead the public as to the true origin of the products or services.
In 2010 the town of Laguiole launched new proceedings against Szajner and 13 other defendants before the Paris Court of First Instance to obtain the cancellation of 24 trademarks containing the word "aguiole" and to forbid all of the defendants from making any use of the name of the town to promote products and services having no origin there.
The judges were asked to examine whether the use of the word "laguiole" to designate and promote products and services which did not originate from the town of Laguiole was misleading and deceptive to consumers.
In its recent decision of 13th September 2012 the Paris Court of First instance decided as follows:
- Regarding the claim of deceptive marketing practices, the judges decided that the use of historical references to the Laguiole village to promote products not produced locally did not constitute a fault and did not mislead consumers into believing that the products originated from Laguiole.
- Regarding the claim for trademark cancellation on the grounds of the damage caused to the name, image and reputation of the town, the judges restated that the name of a town benefits from the same protection as the patronymic name of a natural person. However, they also stated that a town cannot claim a violation of its name, image or reputation where it has been established that the name has also become a generic word to designate a product which is not manufactured exclusively in the locality of the town. Therefore, the judges considered that since the word "laguiole" has become a generic word to designate a type of knife, the town of Laguiole could not claim a monopoly over the commercial use of this word.
- Regarding the claim for trademark cancellation on the ground of lack of distinctiveness, the Paris Court of First Instance considered that the trademark LAGUIOLE could not be considered as a indication of origin since the notoriety of the town Laguiole was not demonstrated and the word "laguiole" is now part of the everyday language.
- The court also found that the trademark LAGUIOLE did not constitute a misleading geographical origin; nor was it contrary to public policy or the result of fraudulent registration.
As a result, the town's claims were dismissed and the court stated that it is the Laguiole knife which has become famous, and not the town of Laguiole. This was illustrated by a survey presented to the court, according to which 53% of those surveyed confirmed that they had never heard of a town called Laguiole.
This decision has caused much controversy at a time where the French state is trying to promote products that are "Made in France", and has raised the question as to how a town may protect its name. Several towns have now opted for trademark registrations and strongly enforce such registrations (eg, Paris and Cannes). However, the survival of such trademarks requires them to be used. Cities which benefit from a level of notoriety in certain areas of activity and for certain products, such as Laguiole, may also consider filing a collective trademark which could be used by the companies related to the city to promote, alongside their own trademarks, authentic products related to the city or its region.
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