It is globally recognized that well known and famous trademarks are subject to a broader scope of protection which goes beyond the average principles that govern trademarks. The European trademark reform adopted in late 2015 strengthened the protection of famous trademarks, notably by providing that such trademarks may serve as a basis for opposition or cancellation against identical or similar marks applied for or registered at a later date, “irrespective of whether the goods or services for which it is applied are identical, similar to or not similar to those for which the earlier mark is registered.”
Trademarks that may be considered “well known” and/or “famous” are usually defined as those that are known by a large portion of the public and that can be immediately recognized as relating to the products and services for which they are used. Even given their high level of recognizability, a recent French case law reminds us that defending these trademarks from infringement is far from an easy task and that courts are not particularly easy going about trademark owners’ reputational claims.
In order to successfully claim that a given mark maintains famous or well-known status, a trademark holder trademarks must demonstrate – with clear and convincing evidence – that his trademark benefits from a high level of awareness among the relevant public.
The trademark holder may do so by providing proof of the market share of products bearing the trademark; the intensity, geographical extent and duration of the use of the trademark; and the size of the investment made in promoting the trademark in the relevant country. It must also be considered that reputation – and the strength and relevance of a mark – may vary over time and that this can have an impact on the outcome of the case.
In a perfect example of the difficulties trademark owners may face in demonstrating well known or famous status comes by way of a trademark infringement case involving Paris-based brand Christian Lacroix. In that case, Christian Lacroix claimed its brand name enjoyed well known status in connection with fashion and haute couture in its fight against a company selling furniture bearing the mark “designed by Mr. Christian Lacroix.”
In February 2017, the French Supreme Court ruled against Christian Lacroix, stating that trademark owners cannot rely only on past reputation. Instead, reputation must be constantly nurtured. With that in mind, the court held that at the time the mark “designed by Mr. Christian Lacroix” was used (i.e., in early 2011), Christian Lacroix’s trademark was no longer being used for haute couture clothing. It was being used primarily via licensing abroad on lingerie and accessories.
The court also stated that because Christian Lacroix failed to demonstrate that the reputation of its trademark had remained strong at the time when the contested mark was put into use, the Christian Lacroix trademark did not have the same reputational aura it had enjoyed in the past and was no longer immediately associated with the haute couture. And as a result, Christian Lacroix could not claim that its mark bore the same level of fame as when the brand was showing haute couture collections.
This decision is a reminder that everything comes with a price. With greater protection comes a greater burden of proof. Trademark owners who intend to claim famous or well known status must be ready to afford it, not only by providing actual evidence but by doing the long-term brand-building work to maintain the necessary level of awareness in the minds of the public. Without consistent attention, a powerful reputation can fade away, and so can the protections that come with it.
* Courtesy of Karine Disdier-Mikus and Nancy Larrieu, intellectual property attorneys with DLA Piper LLP in Paris, with edits by TFL.