Protection of Trade Dress and Packaging in France

Transcription

1 Protection of Trade Dress and Packaging in France German French Polish AIPPI Seminar 2015 Olivia Bernardeau-Paupe 20 March 2015 IPMT/Paris

2 I. Looking for a definition "Trade dress refers to the features of the visual appearance of a product or its packaging." Trade dress can be divided into different categories of features of the visual appearance of a product. 2

3 I. Looking for a definition Categories of trade dress the shape of a product, the shape of the packaging of a product, the colour of a product, the visual appearance of a shop front or decor 3

4 II. The rationale behind the protection 1- Fight against the increase of copycat and lookalike products 2- Packaging performs key functions 3- The issues at stake 4

5 III. Mecanims of protection No legal definition of trade dress in the French Intellectual Property Code (hereafter the "IPC"), nor the EU Directives No specific protection Protection is derived from existing laws: A. Trade mark law B. Industrial design law C. Copyright law 5

6 A. Protection through Trade mark law 6

7 Legal requirements: 1. Legal requirements to protect a shape as a trade mark Article L of the IPC, in line with Article 2 of the Directive 2008/95/CE, provides that: A trade mark or service mark is a sign capable of graphic representation which serves to distinguish the goods or services of a natural or legal person. The following, in particular, may constitute such a sign: [ ] c) Figurative signs such as: devices, labels, seals, selvedges, reliefs, holograms, logos, synthesized images; shapes, particularly those of a product or its packaging, or those that identify a service; arrangements, combinations or shades of color However, Article L c) of the IPC, in line with Article 3 1. e) of the Directive 2008/95/CE, provides that: "The following shall not be of a distinctive nature: [ ] c) Signs exclusively constituted by the shape imposed by the nature or function of the product or which gives the product its substantial value" 7

8 2. Practical implications: Lack of distinctiveness Paris Court of First Instance, 9 July 2009, Palladium v. EXHL "(...) Is not distinctive, a 3D trade mark which sign is not able to identify the origin of a product and link it to a specific company (...)" 8

9 3. Practical implications: shape imposed by the nature or the function of the product (1) Shape mark cancelled (French Supreme Court 30 May 2012) Shape mark distinctive (Paris Court of Appeal 14 February 2003) 9

10 3. Practical implications: shape imposed by the nature or the function of the product (2) Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v. Ferrero SpA 1. The spherical shape of Ferrero's chocolates was deemed distinctive and therefore protectable as a trade mark The Court stated it was not demonstrated that "the spherical shape was imposed by its nature" 10

11 3. Practical implications: shape imposed by the nature or the function of the product (3) Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v. Ferrero SpA 2. The court held that "the arbitrary combination of the golden paper and the brown paper cup was not imposed by the nature or function of the product", therefore this trade mark is distinctive Although this packaging allows conservation of the products, its shape is not imposed by such function 11

12 3. Practical implications: shape imposed by the nature or the function of the product (4) Paris Court of Appeal, 19 December 2012, Sarray Biskuvi Gida Sanayi S.A. v. Ferrero SpA 3. The Court held that the "arbitrary combination of the different elements (distribution of the chocolates, tags, colours, shape of the boxes) are distinctive" The Court considered these shapes to be "sufficiently remote from the usual shapes that are frequently used to pack delicacies" 12

13 4. Practical implications: shape necessary to obtain a technical result (1) Shape necessary to obtain the technical result (French Supreme Court, 30 May 2007; Versailles Court of Appeal, 12 January 2006) Shape not to obtain the technical result (Versailles Court of Appeal, 27 September 2005) 13

14 5. Practical implications: shape necessary to obtain a technical result The Lego cases (2) Versailles Court of Appeal, 26 September 1996, Kirkbi, Lego v. Ritvik " (...) the shape filed as a trade mark, in all its aspects, is dictated only by practical and technical considerations" : trade mark cancelled Paris Court of Appeal, 18 October 2000, Kirkbi, Lego v. Ritvik: "it has been definitively ruled that Kirkbi (manufacturer and seller of the Lego brick) could not get protection on the shape of the Lego brick as a trade mark" CJEU, 14 September 2010, Lego Juris v. OHMI: The CJEU confirmed the position of the French courts 14

15 6. Practical implications: shape which gives the product its substantial value Paris Court of First Instance, 17 March 2010, Salvatore Ferragamo Italia v. Comptoir Lux "(...) Where a 3D trade mark represents a closed omega of a rod and is in the form of a clasp, it is not demonstrated that it would be the substantial value of the designated goods. It is therefore distinctive. (...)" 15

16 7. Extension of the protection to the interior decoration of a shop? (1) CJEU, 10 July 2014, Apple Inc v. Deutsches Patent-und Markenamt "a representation ( ) which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings" 16

17 7. Extension of the protection to the interior decoration of a shop? (2) French Supreme Court, 11 January 2000, Sephora v. Patchouli Valence The protection of the inside layout of a store is legally possible as long as the shape is precise and arbitrary and thus can distinguish the services at stake The Court cancelled the trade mark for lack of distinctiveness due to the imprecise and complexe elements of the same: v the trade mark represents the inside of a shop with so many elements that it is impossible to determine which one of them could be distinctive to distinguish the services offered by Sephora, namely advice to individuals in the field of perfumes. v some of the shapes are purely functional and imposed by the need to display the perfumes and others are not identifiable. 17

18 B. Protection through Industrial design law 18

19 1. Protection through Industrial design law Paris Court of Appeal, 30 January 2015, S.A. Beauté Prestige International v. S.A.R.L. Attractive Fragrances & Cosmetics Jean-Paul Gauthier's perfume bottle "Le Mâle" is protected by Design Law: The court considered that the shape of the bottle was: new with its own specificities (individual character) V. 19

20 2. Protection through Industrial design law Paris Court of Appeal, 14 October 2014, Molinel S.A v. Moulins Soufflet S.A, Cawe FTB Group S.A.S The specificities of this design have to be appraised taking into consideration: - the global impression in the eyes of an informed user, and - the creator's liberty in creating this design, considering the restrictions ensued by the function of the product The design has its own specificities resulting from the lines that "distinguish the design from any other vest that was already published" in the eyes of a professional baker 20

21 C. Protection through Copyright law 21

22 Protection through Copyright law Paris Court of Appeal, 8 April 2005, Parfums Christian Dior v. Technique de la Source "The bottle that is used to commercialize the perfume J'Adore by Christian Dior is characterized by its shape in a drop of water over which the cap fits in a very elongated form, continuing the shape of the bottle. The cap is made of numerous metallic rings topped by a transparent glass ball ( ) the author, through this combination of specificities ( ) demonstrated his personality, conferring originality to the bottle of perfume" 22

23 IV. Protection through unfair competition Main general principle: free trade Limits: Unfair competition/parasitism ü Developped by the French Courts based upon the general principle of civil liability embeded in Articles of the French Civil Code ü It is a safety net ü It can be invoked as a main or subsidiary claim 23

24 Categories of acts of unfair competition/parasitism Main general principle : Free Trade Limits to free trade: Ø Acts of imitating a competitor for personal gain by causing a likelihood of confusion on the market place Ø Acts of "parasitism": riding on the cost tail of a competitor by trading upon its reputation, its investement and its work without any counterparty 24

25 1. Unfair competition/parasitism to the rescue - In the presence of IP rights (1) Paris Court of First Instance, 6 November 2009, Société Ferrero v. S.A.R.L Candy Team Ferrero is the owner of the following 3D international registration under which the famous "tic tac" candies are sold: Candy Team sales in France the "Pick Up" candies in a form highly similar to the Ferrero's candies: 25

26 1. Unfair competition/parasitism to the rescue - In the presence of IP rights Outcome of the case (2) No likelihood of confusion on the part of the relevant public à No trade mark infringement However the Court held that there were acts of parasitism: Ø The candies are of the same form, same energetic value, and same colours Ø The candies are sold in plastic boxes of the same weight and in similar packages, in sets of four boxes! Willingness of Candy Team to trade upon the reputation of Ferrero and its "tic tac", which is not compatible with loyal competition 26

27 2. Unfair competition/parasitism to the rescue - In lack of IP rights (1) French Supreme Court, 4 February 2014, Société Ferragamo Parfums v. Parfums Christian Dior Christian Dior has been selling in France the perfume "Miss Dior" for many years which targets primarily young women: Ferragamo started to sell on the French market its new perfume called "Signorina" also directed at young women: 27

28 2. Unfair competition/parasitism to the rescue - In lack of IP rights - Outcome of the case (2) The court held that acts of parasitism is the result of: 1. The overall similarity between the products: Ø Similar powder pink tone and the bright border Ø Use of a handwriting font to designate the name of the perfume Ø Name of the fragrance on the upper part of the packaging Ø Presence of a stylized knot and rectangular form, which have never been used by Ferragamo for perfume bottles before 28

29 2. Unfair competition/parasitism to the rescue - In lack of IP rights Outcome of the case (3) 2. The products target the same audience and 3. The company Christian Dior has aquired a worlwide reputation in the field of perfumes 29

30 3. Unfair Competition/parasitism to the rescue - In lack of IP rights Paris Court of Appeal, 9 April 2009, Lactalis v. Elvir The Court held that Elvir's packaging constituted parasitism : Ø Lactalis' packaging was not dictated by technological and regulatory constraints Ø Lactalis' packaging was innovative and original Ø Lactalis realised important investments Ø No significant contribution from Elvir 30

31 4. Unfair Competition/parasitism to the rescue - In lack of IP rights Paris Court of Appeal, 16 April 2010, S.A.S. ZV France v. S.A.R.L. DAVIMAR, S.A.R.L. FKF Imitation of the interior layout of Zadig & Voltaire's shops by Bérénice which also commercializes clothes: Use of the same interior layout combining: "a low white lacquered furniture of approximately 50 cm height, without visible handles, running along the wall of the store from the window to the back of the store, topped with rods of the same height (1,73m), without footing and associated with a slightly raised and rectangular central cabinet, also painted in white, serving of exhibition furniture" Likelihood of confusion in the mind of the relevant public: Bérénice's acts of imitation constitute unfair competition 31

32 Conclusion In France no specific protection for trade dress and packaging Mechanisms of protection available: Trade mark law, Industrial design law, and Copyright law Unfair competition/parasitism remains a very useful tool both in the presence or in the absence of IP rights 32

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