Fashion trademarks: Requirement for uninterrupted use
In a recent case before the French Intellectual Property Office (the “INPI”) involving Chanel’s renowned trademark, ‘GABRIELLE’ we take a look about what uninterrupted use means and whether failure to do so means that a trademark can be revoked or freely used by others. Read on to find out more!
Here at Gerrish Legal, we work for several fashion brands, from those more established to startups as well as for online fashion marketplaces which display goods and trademarks of participating brands. The issue of trademark infringement and unauthorised use can be a thorny one on occasion as all parties seek to maintain the goodwill and reputation that their brand has acquired.
The image of your business and the products and services you sell to your customers is everything. The success of your brand is not only linked to profits, but also how you deal with intangible assets, such as trademarks. Indeed, trademarks are key to securing your brand and reputation and differentiate your goods and services from those of your competitors - and looking over those assets is really key to your success!
In this article, we take a look at a French recent case which was heard before the French Intellectual Property Office - the INPI which involved world-famous luxury fashion house, Chanel, and the founder of a French fashion brand, Molly Bracken, in which it was argued that Chanel would be unable to claim a monopoly of its registered trade mark, ‘GABRIELLE’ due to a period of non-use and set out some tips and tricks as to how you can avoid such claims.
What is the risk of non-use?
Article L.714-5 of the French Intellectual Property Code (Code de la propriété intellectuelle) states that:
The owner of a trade mark who, without good reason, has not made genuine use of the trade mark for the goods or services for which the mark is registered for an uninterrupted period of five years from the date on which the trade mark is registered shall forfeit their rights.
Article L.714-5 states that the following shall be deemed to be “use” of a trade mark:
Use made with the consent of the owner of the trade mark
Use made by a person authorized to use the collective mark or guarantee mark
Use of the trade mark, by the owner or with their consent, in a modified form that does not alter its distinctive character, whether or not the mark is registered in the name of the owner in the form used
The affixing of the trade mark to goods or their packaging, by the owner or with their consent, exclusively for export.
Therefore, in order to avoid revocation of a trade mark, or indeed loss of monopoly, it is important that the owner carries out the above activities for an uninterrupted period.
Failure to do so can risk in a claim that the trade mark is revoked, meaning that other individuals can register the trademark to use on their own products and sue other parties in breach of the rights associated with a registered trademark.
Such a revocation could cause major inconvenience for companies like Chanel who have used specific words or names to make their brand stand out over the years, should they unintentionally or inadvertently “pause” use of the trademark for a period as short as a few months.
The GABRIELLE case
The GABRIELLE trademark was registered by Chanel in 2010, as an ode to the House’s founder Gabrielle Chanel, also known as “Coco”.
Because of the name’s implications and protected use, Chanel has named many of its products “GABRIELLE” over the years, from perfumes to bags.
However, in June 2021, Madame Catherine Sidonio, founder of female apparel brand Molly Bracken, wrote to the INPI declaring that the owner of the “GABRIELLE” trademark, designating Chanel, had not made good use of it between the months of June and December of 2015 and therefore the rights to the trade mark should be revoked for any products, other than their perfumes (presumably because the Chanel perfume “Gabrielle” had indeed been marketed since this date on an uninterrupted basis).
Madame Sidonio filed a memorandum, as part of her appeal, to the INPI claiming that there are no documents evidencing use of the GABRIELLE trademark during the months submitted. Madame Sidonio’s documents only support the use of the GABRIELLE CHANEL trademark, not the GABRIELLE sign alone.
Sidonio claimed that the use of GABRIELLE CHANEL changes the sign completely, as it is a different registered trademark, and it cannot be used as evidence for significant use of the GABRIELLE trademark.
As owners of the GABRIELLE trademark, Chanel countered Sidonio’s claims on the grounds that they have made significant use of the trademark, grounds they support via photographs of their “eau de parfum” aptly named “Gabrielle”. The photographs submitted of the eau de parfum clearly show the name “Gabrielle” used in a distinctive and significant manner on both perfume bottle and packaging.
Sidonio based her claims to the GABRIELLE trademark on Chanel’s assumed inability to conjure proof of trademark’s use, uninterruptedly, for five years consecutively.
As noted above, Article L.714-5 of the French Intellectual Property Code states that revocation should take place if a trade mark is not used for five consecutive years. However, in this case, Chanel clearly demonstrated the use of the GABRIELLE trade mark on various products over this 5-year period.
The INPI’s decision
After reviewing the case, Director General of the INPI rejected the appeal to revoke this trademark. He confirmed that the evidence submitted to the court by Chanel corroborates that the GABRIELLE trademark was indeed used in a significant manner during a 5 year span including the cited period of June-October 2015, contrary to the claims made by Madame Sidonio.
Chanel is therefore deemed to have made appropriate use of the GABRIELLE trademark such that it cannot be withdrawn from their ownership. The Public Prosecutor’s Office has upheld the INPI’s decision to reject the appeal, although Madame Sidonio’s intentions going forward remain unclear and she may yet continue the matter.
Key Takeaways
Protection of your brand (in all industries and not just fashion) is really key to the success of your business and often results in a lot of time and investment - not only in procuring a trade mark registration in the first place but also in respect of the time and investment of carefully procuring and protecting your image based on that trade mark. It is therefore really important that you choose a strong and distinctive trade mark for your brand to ensure that you can proceed to smooth registration and avoid opposition and revocation claims generally.
As highlighted in this case before the INPI, it is not enough to simply obtain your trade mark registration. Care also has to be taken to ensure that you monitor use of your trade mark to ensure that it is consistently used for the goods and services to which it relates to avoid a claim of non-use and a risk of revocation or to avoid indirectly accepting infringements that other parties may be carrying out in respect of your trade mark.
The key to Chanel’s success in this case was the fact that they were able to point to evidence that the GABRIELLE trade mark had indeed been used throughout the relevant period - therefore all trade mark owners should keep note of documentary evidence showing such use.
For more information on using names as trademarks and a general “to-do” on trademarks or if you need any advice as to your intellectual property, then please do not hesitate to get in touch!
Article by Gabrielle O’Sullivan and Alix Balsan @ Gerrish Legal.
January 2022