Well-known trademark and fair motive don’t go together well

A recent decision from the French High Court focused on the application of article L.713-5 of the French Intellectual Property Code regarding the attempt to a notorious trademark.

The case was opposing Mrs Virginie Taittinger to the TAITTINGER company. The first one assigned her company shares and undertook not to use the name TAITTINGER directly or indirectly for whatever reason. Nevertheless, she reserved several domain namesvirginietaittinger with several extensions.

The TAITTINGER company sued her on various grounds, such as violation of the convention, and attempt to the well-known trademark.

On the latter in particular, the High Court had to issue a decision, the Court of Appeal refusing to consider the attempt to the notorious mark considering that Mrs Taittinger does not benefit from this notoriousness and does not attempt to its value by remembering her family origin, her professional career or her past experience.

The High Court hereby breaks the prior decision by determining that “the possible existence of a fair motive for the use of the sign does not enter into consideration while appreciating the undue benefit given by the notoriousness of the trademark but must be appreciated separately.”