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Re: French court rules to protect Stones logo
Posted by:
Irix
()
Date: March 12, 2021 22:35
A translation - (legal references to comparable cases shortened):
Renowned trademark: the Rolling Stones "got satisfaction"
In a decision dated February 25, 2021, the Paris Court of Justice ruled that the trademarks reproducing the Rolling Stones' logo are known to a significant part of the public and enjoy a high degree of reputation in the European Union. The court also found copyright infringement for the iconic logo of the English band.
by Gaëtan Cordier and Charlotte Haddadle, 12 March 2021
The Third Chamber of the Paris Court of Justice had to deal with a dispute between the company that owns and manages the majority of the intellectual property rights of the English rock band The Rolling Stones and a company that imports badges from China.
In this case, the owner of the European Union's figurative trademarks reproducing the famous logo of the group The Rolling Stones, registered in particular to designate badges, embroidered patches and ornamental badges, sued the company for trademark and copyright infringement, parasitism and unfair competition for having imported products reproducing this logo, decorated with motifs of the Breton flag. The court rejected the claims for unfair competition and parasitism, but retained the infringement of the plaintiff's trademarks and copyright.
Notion of reputed trademark and assimilation of a rock band to a product or service
Firstly, the plaintiff argues that its trade marks have a high reputation among a significant part of the relevant public in France and in the European Union. It is recalled in this regard that Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark provides that where a trade mark has a reputation in the European Union, it is possible to derogate from the principle of speciality. In other words, a trade mark with a reputation enjoys extensive and exceptional protection.
The court will base its decision on the case law of the European Court of Justice (ECJ) and the Court of Justice of the European Union (CJEU). The ECJ, in a General Motors v. Yplon SA judgment of 14 September 1999, stated that "in order to satisfy the requirement of repute, a registered trade mark must be known to a significant part of the public concerned with the goods or services covered by it" (ECJ 14 Sept. 1999, Case C-375/97). According to the Court, the elements that the national judge must take into consideration in the examination of the above-mentioned condition are in particular: the market share held by the mark, the geographical extent and the duration of its use. The court goes on to cite the Iron Smith KFT v. Unilever judgment of 3 September 2015, which adds that "the condition relating to territoriality must be regarded as fulfilled where the Community trade mark has a reputation in a substantial part of the territory of the Union" (CJEU 3 Sept. 2015, Case C-125/14). In this case, unsurprisingly, the court found that the trademarks in question have a reputation in the European Union. In order to base its decision, it referred in particular to various magazine and newspaper articles which indicated that the logo registered as a trade mark was considered to be the "living language of the Rolling Stones" and that, according to certain surveys, the Rolling Stones logo was the most iconic of all time. In addition, these trademarks are used extensively (T-shirts, partnerships with major brands and football clubs, etc.).
It should be noted that when the court refers to the close link between the logo and the Rolling Stones, it seems to justify the reputation of the logo by the fame of the worldwide English rock band to which it is linked. Thus, do we not sometimes see a confusion between the reputation of the trademark and the trademark owner?
It is settled case law that the essential function of a trade mark is to guarantee to consumers the identity of the origin of the product (CJEU 22 June 1976, case C-119/75). With this decision, it would appear that the court is finally equating the legendary band The Rolling Stones with a product or service.
Infringement of the reputed trademark
Secondly, the Paris Court will consider the question of infringement of the trademarks in question. The principle is that the assessment of the identity of a sign to a trademark is a matter for the national judge. That being said, it was up to the court to use the bundle of evidence method to determine whether the defendant had infringed by importing the goods in question. In this respect, the judges' analysis is not surprising. Indeed, they recall that, in accordance with Regulation (EU) 2017/1001 of 14 June 2017, a trade mark owner may prohibit third parties from using a sign in the course of trade for goods or services where that sign is identical or similar to the trade mark and designates identical or similar goods or services and there is a likelihood of confusion on the part of the public. The court then set out to prove the existence of a likelihood of confusion. In accordance with the ECJ's Sabel BV judgment of 11 November 1997, the court stated that "it is appropriate to rely on the overall impression produced by the signs in question in order to assess the likelihood of confusion" (ECJ 11 Nov. 1997, Case C-251/95). Moreover, the ECJ and the Court of Cassation have affirmed that the reputation of the trademark gives it a very important distinctive character, and its notoriety is an element to be considered in the assessment of the likelihood of confusion. In addition, in the above-mentioned General Motors v. Yplo decision of 14 September 1999, the Community courts identified an additional factor to be taken into account by the national court in assessing the likelihood of confusion, namely the extent of the trade mark's reputation. In this respect, the Court recalled that "the greater the distinctive character of the earlier mark, the greater the likelihood of confusion". Indeed, a trade mark that is well known to the public has a particular distinctive character, thus making the risk of confusion higher.
According to the information provided in the decision, the goods seized have the same characteristics as the applicant's marks. In the present case, a quick comparison between the marks and the contested badges shows that the shape and volume of the mouth and lips of the contested marks are identical. The likelihood of confusion is therefore easily established, given that the only perceptible difference between the contested marks and signs is the affixing of motifs taken from the Breton flag at the level of the lips. In this respect, the court therefore had no difficulty in finding that, given the strong similarity of the signs for identical goods, there was a likelihood of confusion in the mind of the public between the plaintiff's marks and the patches imported by the defendant company. After stating that there is a likelihood of confusion in the mind of the public, the Court held that the defendant company had infringed the trade marks reproducing the Rolling Stones' logo.
Infringement of copyright
The plaintiff company then argued that by reproducing the Rolling Stones' logo without its authorisation, the importing company had committed "a flagrant plagiarism constituting an infringement of the copyright of the artist John Pasche", whose economic rights it holds. In this case, after having demonstrated that it owns the rights to John Pasche's graphic work, the plaintiff will have to justify the original character of the work in order to benefit from the protection granted by copyright.
Firstly, the court decided that the plaintiff company "by marketing under its name in an unequivocal manner" the embroidered patches reproducing John Pasche's graphic work, is presumed to hold the author's economic rights on the aforementioned work. Next, the judges will consider the question of the originality of the work. Indeed, only an original work bearing the imprint of its author's personality enjoys an exclusive intangible property right enforceable against all, according to Article L. 111-1 of the Intellectual Property Code. Case law, particularly in Europe, defines the originality of a work as constituting an intellectual creation specific to its author. In this sense, the CJEU, in a judgment of 29 July 2019, recalled that "for an intellectual creation to be regarded as being unique to its author, it must reflect the author's personality, which is the case if the author was able to express his creative abilities when making the work by making free and creative choices" (CJEU 29 Jul. 2019, Funke Medien, C-469/17). In this case, the defendant company argued that John Pasche, following Mick Jagger's request, was inspired by the representation of the goddess Kali and that the work therefore did not bear the stamp of its author's personality. The court then stated that although John Pasche was inspired by it, "he associated elements from a psychedelic universe and translated a message inviting an upheaval of morals, translating a vision of his own" and deduced that the Rolling Stones' logo did bear the personality of its author and was therefore original. Finally, by comparing the disputed signs imported into France with the work of John Pasche and in view of the very strong similarities, the court found that the plaintiff company had infringed its economic rights.
The present decision of the Paris court, while remaining entirely faithful to its jurisprudence on the subject, provides indications on the notion of reputed trademark, within the meaning of the EU Regulation 2017/1001 of 14 June 2017 on the European Union trademark, and on the close link between the trademark and its product, or in this case "its natural person". We would then see a "personification of the logo", a trademark could thus make it possible to link a product to natural persons when these persons enjoy a significant reputation. -- [www.Dalloz-actualite.fr] - (translated by DeepL.com).
Renowned trademark: the Rolling Stones "got satisfaction"
In a decision dated February 25, 2021, the Paris Court of Justice ruled that the trademarks reproducing the Rolling Stones' logo are known to a significant part of the public and enjoy a high degree of reputation in the European Union. The court also found copyright infringement for the iconic logo of the English band.
by Gaëtan Cordier and Charlotte Haddadle, 12 March 2021
The Third Chamber of the Paris Court of Justice had to deal with a dispute between the company that owns and manages the majority of the intellectual property rights of the English rock band The Rolling Stones and a company that imports badges from China.
In this case, the owner of the European Union's figurative trademarks reproducing the famous logo of the group The Rolling Stones, registered in particular to designate badges, embroidered patches and ornamental badges, sued the company for trademark and copyright infringement, parasitism and unfair competition for having imported products reproducing this logo, decorated with motifs of the Breton flag. The court rejected the claims for unfair competition and parasitism, but retained the infringement of the plaintiff's trademarks and copyright.
Notion of reputed trademark and assimilation of a rock band to a product or service
Firstly, the plaintiff argues that its trade marks have a high reputation among a significant part of the relevant public in France and in the European Union. It is recalled in this regard that Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark provides that where a trade mark has a reputation in the European Union, it is possible to derogate from the principle of speciality. In other words, a trade mark with a reputation enjoys extensive and exceptional protection.
The court will base its decision on the case law of the European Court of Justice (ECJ) and the Court of Justice of the European Union (CJEU). The ECJ, in a General Motors v. Yplon SA judgment of 14 September 1999, stated that "in order to satisfy the requirement of repute, a registered trade mark must be known to a significant part of the public concerned with the goods or services covered by it" (ECJ 14 Sept. 1999, Case C-375/97). According to the Court, the elements that the national judge must take into consideration in the examination of the above-mentioned condition are in particular: the market share held by the mark, the geographical extent and the duration of its use. The court goes on to cite the Iron Smith KFT v. Unilever judgment of 3 September 2015, which adds that "the condition relating to territoriality must be regarded as fulfilled where the Community trade mark has a reputation in a substantial part of the territory of the Union" (CJEU 3 Sept. 2015, Case C-125/14). In this case, unsurprisingly, the court found that the trademarks in question have a reputation in the European Union. In order to base its decision, it referred in particular to various magazine and newspaper articles which indicated that the logo registered as a trade mark was considered to be the "living language of the Rolling Stones" and that, according to certain surveys, the Rolling Stones logo was the most iconic of all time. In addition, these trademarks are used extensively (T-shirts, partnerships with major brands and football clubs, etc.).
It should be noted that when the court refers to the close link between the logo and the Rolling Stones, it seems to justify the reputation of the logo by the fame of the worldwide English rock band to which it is linked. Thus, do we not sometimes see a confusion between the reputation of the trademark and the trademark owner?
It is settled case law that the essential function of a trade mark is to guarantee to consumers the identity of the origin of the product (CJEU 22 June 1976, case C-119/75). With this decision, it would appear that the court is finally equating the legendary band The Rolling Stones with a product or service.
Infringement of the reputed trademark
Secondly, the Paris Court will consider the question of infringement of the trademarks in question. The principle is that the assessment of the identity of a sign to a trademark is a matter for the national judge. That being said, it was up to the court to use the bundle of evidence method to determine whether the defendant had infringed by importing the goods in question. In this respect, the judges' analysis is not surprising. Indeed, they recall that, in accordance with Regulation (EU) 2017/1001 of 14 June 2017, a trade mark owner may prohibit third parties from using a sign in the course of trade for goods or services where that sign is identical or similar to the trade mark and designates identical or similar goods or services and there is a likelihood of confusion on the part of the public. The court then set out to prove the existence of a likelihood of confusion. In accordance with the ECJ's Sabel BV judgment of 11 November 1997, the court stated that "it is appropriate to rely on the overall impression produced by the signs in question in order to assess the likelihood of confusion" (ECJ 11 Nov. 1997, Case C-251/95). Moreover, the ECJ and the Court of Cassation have affirmed that the reputation of the trademark gives it a very important distinctive character, and its notoriety is an element to be considered in the assessment of the likelihood of confusion. In addition, in the above-mentioned General Motors v. Yplo decision of 14 September 1999, the Community courts identified an additional factor to be taken into account by the national court in assessing the likelihood of confusion, namely the extent of the trade mark's reputation. In this respect, the Court recalled that "the greater the distinctive character of the earlier mark, the greater the likelihood of confusion". Indeed, a trade mark that is well known to the public has a particular distinctive character, thus making the risk of confusion higher.
According to the information provided in the decision, the goods seized have the same characteristics as the applicant's marks. In the present case, a quick comparison between the marks and the contested badges shows that the shape and volume of the mouth and lips of the contested marks are identical. The likelihood of confusion is therefore easily established, given that the only perceptible difference between the contested marks and signs is the affixing of motifs taken from the Breton flag at the level of the lips. In this respect, the court therefore had no difficulty in finding that, given the strong similarity of the signs for identical goods, there was a likelihood of confusion in the mind of the public between the plaintiff's marks and the patches imported by the defendant company. After stating that there is a likelihood of confusion in the mind of the public, the Court held that the defendant company had infringed the trade marks reproducing the Rolling Stones' logo.
Infringement of copyright
The plaintiff company then argued that by reproducing the Rolling Stones' logo without its authorisation, the importing company had committed "a flagrant plagiarism constituting an infringement of the copyright of the artist John Pasche", whose economic rights it holds. In this case, after having demonstrated that it owns the rights to John Pasche's graphic work, the plaintiff will have to justify the original character of the work in order to benefit from the protection granted by copyright.
Firstly, the court decided that the plaintiff company "by marketing under its name in an unequivocal manner" the embroidered patches reproducing John Pasche's graphic work, is presumed to hold the author's economic rights on the aforementioned work. Next, the judges will consider the question of the originality of the work. Indeed, only an original work bearing the imprint of its author's personality enjoys an exclusive intangible property right enforceable against all, according to Article L. 111-1 of the Intellectual Property Code. Case law, particularly in Europe, defines the originality of a work as constituting an intellectual creation specific to its author. In this sense, the CJEU, in a judgment of 29 July 2019, recalled that "for an intellectual creation to be regarded as being unique to its author, it must reflect the author's personality, which is the case if the author was able to express his creative abilities when making the work by making free and creative choices" (CJEU 29 Jul. 2019, Funke Medien, C-469/17). In this case, the defendant company argued that John Pasche, following Mick Jagger's request, was inspired by the representation of the goddess Kali and that the work therefore did not bear the stamp of its author's personality. The court then stated that although John Pasche was inspired by it, "he associated elements from a psychedelic universe and translated a message inviting an upheaval of morals, translating a vision of his own" and deduced that the Rolling Stones' logo did bear the personality of its author and was therefore original. Finally, by comparing the disputed signs imported into France with the work of John Pasche and in view of the very strong similarities, the court found that the plaintiff company had infringed its economic rights.
The present decision of the Paris court, while remaining entirely faithful to its jurisprudence on the subject, provides indications on the notion of reputed trademark, within the meaning of the EU Regulation 2017/1001 of 14 June 2017 on the European Union trademark, and on the close link between the trademark and its product, or in this case "its natural person". We would then see a "personification of the logo", a trademark could thus make it possible to link a product to natural persons when these persons enjoy a significant reputation. -- [www.Dalloz-actualite.fr] - (translated by DeepL.com).
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