Breve HALLYDAY VDef

Only the trademark owner is in a position to file an opposition against applications corresponding to his patronymic name, on the only basis of a prior registered trademark.

Should we expect from the New EU regulation a more efficient protection, while the French IP office failed to use the article L711-3?

 

As per positive law, an individual has been able to register in France the following three trademarks: « LAETITIA HALLYDAY », « JADE HALLYDAY » and « JOY HALLYDAY » before the French IP Office!

The oppositions filed against these three applications on the basis of the French trademark « JOHNNY HALLYDAY » n° 1218051, registered in the name of Jean-Philippe SMET also known as Johnny HALLYDAY, has failed to succeed.

With three decisions issued on September 25, 2018, the French IP Office has denied these three oppositions, on the ground that it is part of the Institute’s duties to acknowledge as inadmissible an opposition introduced by a person who was not entitled to (the documents joined to the opposition enabled the Examiner to ascertain that this condition was not fulfilled in the present case). Therefore, on the day the opposition was introduced, Jean-Philippe SMET, a.k.a JOHNNY HALLYDAY could no longer act as the owner of the invoked prior trademark.

This is on the ground of a mere procedural defect that the Institute denies the introduced oppositions, on the basis of the article R712-15[1] of French IP regulation. All three trademarks have been registered by the French Office on October 12, 2018.

The heirs of JOHNNY HALLYDAY still have options to defend their names, however these now imply longer judiciary proceedings.

Should we await the evolution offered by the New EU Regulation (§1), whereas the French examiner in charge of the registration had existing tools in his hands (§2)?

 §1. Does the new EU Directive offer new perspectives?

In French positive Law, an opposition against a trademark application may only be introduced on the ground of on of one of the following rights:

  • a French or European trademark, or International Registration covering France or EU, or a well-known unregistered trademark;
  • a geographical indication for agricultural products and foodstuffs;
  • the name, image or repute of a local authority;
  • an AOC, AOP or Geographical Indication as per Rural and maritime fishing code.

EU Directive 2015/2436 from the European Parliament and Counsel, adopted at the end of 2015, and being part of the new EU regulation, includes within its article 5 a point 4, according to which « any Member State may provide that a trade mark is not to be registered or, if registered, is liable to be declared invalid where, and to the extent that:
(b) the use of the trade mark may be prohibited by virtue of an earlier right, other than the rights referred to in paragraph 2 and point (a) of this paragraph, and in particular:
(i) a right to patronymic name;
(ii) a image right;
(iii) a copyright;
(iv) an industrial property right 
»

Let’s wish for the trademark owners the rapidest implementation of this Directive!

In the present case, this provision could have enable JOHNNY HALLYDAY’s Heirs to oppose the fraudulent registrations of these trademarks, provided that the French Institute (where the legislator failed to) would be ready to assimilate, in practice, an artistic pseudonym to a « name ».

§2. What other paths would have been available to the French Institute: what about absolute grounds in relation to a Pseudonym being subject to National Tribute?

Article L711-3 of the French IP Code mentions, within its parts b) and c), that can’t be adopted as a trademark, or part of same, a sign: b) that is contrary to public policy or morality, or which use is legally prohibited; c) that is likely to mislead the public, amongst others with regards to the product or service’s nature, quality or geographical origin.

Presumably, the review of nullity’s absolute grounds could have led French Institute to issue a provisional refusal of these three applications, on the basis of the above mentioned provisions.

Indeed, couldn’t one consider that it is contrary to morality to capitalize on French notoriety?

What is more, these trademarks aren’t they de facto misleading to the public, at least regarding the nature of the products and services sold bearing these?

The nature of a branded product refers to all the characters and properties defining something.

Isn’t the high notoriety associated with the filed signs misleading for the consumer, with regards to the nature of the « glasses » or others « digital recording media » covered by these trademarks?

Clearly, French consumers, facing a pair of glasses branded « LAETITIA HALLYDAY » or « JADE HALLYDAY » will necessarily think he has a product acknowledged by one of the family member.  

With this conclusion, without issuing any objection, the French Office confirms that, contrarily to his homologs (such as Chinese PTO for instance), it does not consider to have as a mission to preserve consumers’ general interest.

The decisions are available here-after:

 

Please feel free to contact us, we are at your disposal to assist you to determine your defence trademark’s strategy.

 

Lucie PREVOST                                             Soazig THEMOIN
French and European Trademark                    Partner
& Design Attorney                                            French and European Trademark & Design Attorney
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[1] R712-15 of French IP Code : (…) : Is declared inadmissible any opposition either introduced after the relevant administrative deadline, either introduced by a person who is not entitled to, or that does not meet the conditions required by articles articles R. 712-13 and R. 712-14, and by the decision mentioned at R. 712-26.