Abstract
In any marketing process, it is essential to use the law to optimize the actions of managers, and it can be a genuine lever for achievement. In such cases the law is not perceived as an obligation and a constraint, but as a catalyst for success (André and Rigaud-Lacresse 2014, p. 10).
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Notes
- 1.
L’Institut National de la Propriété Intellectuelle (France); United States Patent and Trademark Office (USA); European Union Intellectual Property Office (Europe); World Intellectual Property Organization (International).
- 2.
The trademark package, which entered into force during the first quarter of 2016, abolished this requirement. Now, to obtain a trademark, it is sufficient that the sign “be represented in the registry in a manner that enables the relevant authorities and the public to identify precisely and clearly the subject that benefits from its owner’s protection”. This change opens the door to olfactory (smell) and sound trademarks that it has almost never been possible to register before.
- 3.
CJCE, 12 December 2002, Sieckman decree.
- 4.
Article L.141–5 of the French Code of Sport law.
- 5.
Article 6ter of the Paris convention dated 20 March 1883, as amended, for the protection of industrial property.
- 6.
TPICE, 20 September 2011, affair T-232/10. This sign shows the traditional Soviet emblems of the hammer, the sickle and the five-pointed red star above a globe, along with two crowns of wheat covered with ribbons bearing the slogan “Workers of the World, unite!” in the languages of the fifteen former Soviet republics.
- 7.
The judge decided that “the abundant literature has familiarized the public with the figurative sense of this word, the averting of real difficulties and an escape towards dreams”: CA Paris, 7/05/1979, “opium”, PIBD, 1980, no. 256 III. 87.
- 8.
Cass. Com., 30 May 2012, no. 11–20.724.
- 9.
The deception can also originate in the composition of the product or service or its origin.
- 10.
The issue here was consumer protection and economic public order.
- 11.
- 12.
See article L.711–4 of the French Code of Industrial Property Law, which includes: company name, store name, author’s rights, rights to a protected drawing or model, personal name, pseudonym or its image, the name, image or reputation of a local authority.
- 13.
Remember that a French trademark is only protected in France; a European trademark is only protected in the European Union, etc.
- 14.
See p. XXX.
- 15.
Cited on page XXX.
- 16.
Cass. Com., 18/04/2000, no. 97–19631.
- 17.
Recall that brands are subject to the principle of specialty. That is “the registration of the brand gives its owner the right of property over this brand for the products and services he has designated” (L.713-1 CPI). In other words, the protection of a brand can only succeed if the sign that has been registered is used by an unauthorized third party to designate identical or similar products or services. Thus, it is possible to find the brand Mont Blanc on luxury leather goods and on cream desserts; the brand Pontiac can be found on automobiles and refrigerators.
- 18.
Article L.713-5 of the French Code of Intellectual Property Law.
- 19.
Cass. Com., 20/11/2012, no. 12-11.753. The judge expressed his decision as follows: “but given that having rejected the thesis that the public concerned was a prestige clientele, and retained the fact that there was reason to take into account the general public’s awareness of the brands involved”.
- 20.
Renowned brands are not necessarily luxury brands: Etam CA Nouméa, 1/08/2013, RG 12/00393; Le Méridien and Méridien, Cass. Com., 21/10/2008, no. 07-14.979; Desperados, Cass. Com., 10/02/2007, no. 05-10.462; Lego, CA Paris, 6/03/1986; Mazda, CA Paris, 19/10/1970.
- 21.
Cass. Crim., 26/09/2012, no. 11–85.743.
- 22.
Cass. Com., 24/05/2011, no. 10–18.474.
- 23.
Suzuki and Aprilia, Cass. Crim., 27/03/2012, no. 10-88.812 International renown; Esso, Cass. Com., 8 April 2009, 06-10.961; The Agatha Scottish-terrier, CA Paris, 5/3/2014, PIBD, 2014, no. 1004, 340.
- 24.
TGI, Paris, 22 June 2012, RG 2011/06352, Givenchy against Tati Web and textiles representation.
- 25.
CJUE, 23/03/210, aff. C236/08.
- 26.
Cass. Com., 12 July 2005, no. 03–17.640.
- 27.
The well-known brand Pontiac can also be found on automobiles and the brand Pontiac on refrigerators (CA Paris, 8/12/1962)—the well-known brand Mazda on lamps and the brand Mazda on automobiles (CA Paris, 19/10/1970).
- 28.
This was the case for the use of the Vuitton brand for the publication of musical recordings in a cover bearing a pattern close to that registered by Vuitton as a figurative sign to indicate leather products sold by the firm Louis Vuitton Malletier: Cass. Com., 11/03/2008, no. 06–15.594.
- 29.
Cass. Com., 12/07/2005, no. 03–17.640.
- 30.
CJCE, 23/10/2003, affaire C-408-01 Adidas Salomon c/ Fitness World trading.
- 31.
If only because of fines that may be as high as 10 % of consolidated global annual turnover (sales).
- 32.
Already in 1979, with Irish jewels, and in 1896, with French textiles.
- 33.
For example, see European Court of Justice decision C-478/07—Budejovicky Budar.
- 34.
Article 34 of the TFEU—“Quantitative import restrictions and all measures having equivalent effect shall be prohibited between Member States.”
- 35.
See, for example, Court of Justice decisions C-325/00—Commission v German; C-6/02—Commission v France and C-255/03—Commission v Belgium.
- 36.
For example, over the past few years sanctions have been taken in France (perfumes), Poland (luxury watches), Italy and Germany (high-end cosmetics).
- 37.
Commission’s Best Practices for the Submission of Economic Evidence (2011).
- 38.
Dr. Miles Med. Co. v John D. Park & Sons Co., 220 U.S. 373 (1911), overruled by Leegin Creative Leather Prods. v PSKS Inc., 551 U.S. 877 (2007).
- 39.
See, for example, the European Commission’s guidelines on “vertical restraints”—2010/C130.01—OJEU of 19 May 2010.
- 40.
This question is not trivial, since some companies rightly believe that they cannot use an exclusive distribution system and must “make do” with a selective distribution system, and therefore take the risk of “taking the brand out of the luxury universe” (Kapferer and Bastien 2012. p. 244).
- 41.
Article 101.2 TFEU: “Any agreements or decisions prohibited pursuant to this article shall be automatically void”.
- 42.
This is why, for example, luxury brands that want to sell their products directly on a dedicated website (which they directly control) are well inspired to open a physical “bricks and mortar” store. In doing so, they not only require of themselves what they require of their distributors, but are also able to justify, if necessary, the criteria they require.
- 43.
Overt technologies are, for example, holograms, filigrees, VOE, OVD and individual numberings, while covert technologies include nano or micro impressions, RFID and similar technologies.
- 44.
See decision C-439/09-Pierre Fabre dermo-cosmetics or points 52–56 of the European Commission’s Guidelines on Vertical Restrictions: 2010/C130/01.
- 45.
“Black list clause” or a “hard-core restriction” as defined under Article 4 of European Commission Regulation 330/2010 of 20 April 2010.
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Bretonnière, J.-Fr. (2009), “Marque de prestige: une protection renforcée par la CJCE”, Revue Lamy Droit des Affaires, p. 41.
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André, C., Fournier, A. (2017). Brand as a Legal Asset for Luxury Companies: Brand Power. In: Rigaud-Lacresse, E., Pini, F. (eds) New Luxury Management. Palgrave Advances in Luxury. Palgrave Macmillan, Cham. https://doi.org/10.1007/978-3-319-41727-1_7
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