Construction group loses rights in Eiffel name

“A little spark kindles a great fire.” Many IP professionals have learnt that this saying is particularly meaningful when it comes to trademark litigation. Indeed, trademark infringement claims are often followed by counterclaims for revocation or invalidity of the claimant’s trademark, which may have devastating consequences if improperly anticipated. French construction group Eiffage learnt this expensive lesson in a recent ruling from the Bordeaux Court of Appeal (Compagnie Française Eiffel Construction Metallique v Couperie-Eiffel, 16th May 2011).

The claimant, Compagnie Française Eiffel Construction Metallique (CFECM), was originally called Compagnie Française d’Entreprises Metalliques and took its current name in 1989, adding the surname “Eiffel” to its designation. CFECM is a subsidiary of French construction group Eiffage, whose name was also chosen to indicate connections with the designer of the world-famous Eiffel Tower. Following several mergers and acquisitions, CFECM became the owner of French and international trademarks comprising or including the name “Eiffel” for building materials and services. In 2005 CFECM registered two further French and Community trademarks for EIFFEL in 13 different classes for a  broad selection of goods and services, most of which were very distinct from the building industry.

In 2006 CFECM relied on these trademarks to engage in a legal battle against one of the descendants of Gustave Eiffel. CFECM brought an action before the French courts to obtain the revocation for non-use of two trademarks containing the words “Gustave Eiffel”. These trademarks had been registered in 1991 and in 2000 by Philippe Couperie-Eiffel, the great-great grandson of the famous engineer.

In response to this action, Couperie-Eiffel, supported by a group of other descendants, requested that CFECM's trademarks be cancelled on the grounds that they had been registered in the absence of any legitimate right to use the surname, and therefore violated Article L.711-4 of the IP Code:

"Signs may not be adopted as marks where they infringe earlier rights, particularly: ...g) The personality rights of another person, particularly his surname, pseudonym or likeness."

To support his counterclaim, Couperie-Eiffel relied on the minutes of the 1st March 1893 extraordinary general meeting of the Compagnie des Etablissements Eiffel, then presided over by Eiffel himself. According to this document, Eiffel retired from the company in 1893, sold all of his shares and expressly prohibited that his name be used for industrial purposes after he left the company.

The ruling of the Bordeaux Court of First instance (5th January 2010) supported Couperie-Eiffel and considered that CFECM had registered the trademarks in bad faith and in violation of the prior right of Eiffel's descendants over the surname "Eiffel". CFECM's trademarks using the name “Eiffel” were therefore cancelled and CFECM was also prohibited from making any use of the name “Eiffel” in any way, particularly through filings as a trademark or use as a commercial name

CFECM appealed to the Bordeaux Court of Appeal and maintained its original claim to obtain the revocation for non-use of the Couperie-Eiffel's trademarks. To support this appeal, CFECM claimed as follows: 

• CFECM was entitled to use the name “Eiffel” because the company was the result of several mergers and acquisitions and there had been a chain of transmission from the company Ateliers de Constructions d’Eiffel, founded by Eiffel in 1866, which resulted in the right to use this name being transmitted to CFECM. 
• Should its right to use the name “Eiffel” not be recognised by the court, the trademarks comprising the word “Eiffel” could not be challenged since, under L.714-3 of the IP Code, the right to challenge a trademark on such grounds expires if such trademarks have been tolerated for five years.

The Bordeaux Court of Appeal rejected all the contentions made by CFECM and confirmed the first instance decision. Indeed, the appeal judges considered that the surname “Eiffel” undoubtedly referred to the famous engineer, and that therefore benefits from personality rights protection. Such rights can be exercised by any and all members of the family at any generation. The court underlined that this right to protect the family surname is distinct from any trademarks which may have been registered by the family in regard to that name. Therefore, it was for CFECM to establish that it was authorised to make commercial use of the surname “Eiffel” and to file trademarks containing this name.

The appeal judges rejected the contentions of CFECM, according to which it had been authorised to use the surname as a consequence of a chain of transmission of the company founded by Eiffel in 1866. Indeed, the appeal decision expressly referred to the minutes of the 1st March 1893 extraordinary general meeting, quoting the words of the engineer:

“In order that nobody be mistaken and to mark in the most obvious way that I now intend to remain absolutely unconnected with the management of the company that bears my name, I expressly want my name to disappear from the designation of the society, at the same time as I will be separating myself from it.

I understand that this change of name may be considered as leading to some decrease in the value of my contribution. Therefore, I am willing, should my wish be granted, to abandon 2,000 of the 3,571 shares which have been granted to me as consideration for my contribution in industry.”

Since Eiffel's proposal was accepted by the extraordinary general meeting and since the name of the company was changed following this agreement, the appeal judges considered that no rights over the surname “Eiffel” could have been transferred by the Compagnie des Etablissements Eiffel to any of its successors, including CFECM.

Finally, the appeal court also rejected the CFECM's contentions as to the applicability of the provisions of Article L.714-3 of the IP Code. Indeed, under this article, a claim for cancellation on the basis of prior rights is barred if the trademark was registered in good faith and if the claimant has tolerated this registration for five years. As in all legal systems, good faith is presumed and it is up to the other party to establish the applicant's bad faith at the time of the registration of the trademark. However, the appeal judges considered that the presumption of good faith implied that the trademark applicant could have been mistaken as to the extent of its rights. Based on the notoriety of the surname “Eiffel” and the historical links between the company and the famous engineer, the judges considered that CFECM could not have been mistaken and could not be considered to have acted in good faith regarding the registration of the trademarks containing this surname. Therefore, there was no time limit for challenging the trademarks. Thus, the appeal court confirmed the cancellation.

As a consequence of the cancellation, CFECM's initial claim for the revocation of Couperie-Eiffel's trademarks for non-use was rejected on the grounds that CFECM no longer had any legal interest in obtaining the revocation of these trademarks, and therefore did not fulfil the conditions of Article 714-5 of the IP Code.

The appeal court also confirmed the general prohibition against CFECM making any use of the name “Eiffel”, particularly through trademark filings or use as a commercial name.