The Laguiole brands affair: the end of usurpation?
On Tuesday 5 March 2019, the Paris Court of Appeal put an end to a long legal battle. The story had begun in the 1990s, when a Val-de-Marne entrepreneur had started to to register and redeem trademarks "Laguiole" for a wide variety of products. The entrepreneur then granted licences against royalties to companies, often foreign, which could then use the name "Laguiole" for products made abroad and without any link with the village of Aveyron. The municipality of Laguiole had sued the entrepreneur to regain control of his name.
A tumultuous lawsuit over Laguiole brands
In 2010, Laguiole brought an action before the Tribunal de Grande Instance (TGI) of Paris to have Mr. Szajner's trademarks annulled. The village denounced a spoliation of its name, a misleading commercial practice and an attack on its image and reputation. However, the Court of First Instance dismissed the case against the village, and this judgment was confirmed by the Court of Appeal in 2014.
In 2016, the Court of Cassation ...yet partially overturned the Court of Appeal's decision. The judges had indeed considered that the village of Laguiole had a real reputation in France. According to them, the fact that the "commune of 1,300 inhabitants [was] known by 47 % of a representative sample of the French population, even if it was primarily known for its knives and cheese" could mislead the average consumer into believing that these products originated in the said commune.
In 2017, in a parallel procedure conducted at European level, the Forge de Laguiole (which has been manufacturing the original folding knives in the village of the same name since 1987), had also won against Mr. Szajner. The Aveyron company had thus been able to have the European trade mark Laguiole registered by the entrepreneur partially cancelled. But the decision of the CJEU concerned only cutlery.
The cancellation of 20 Laguiole brands
Following the reasoning of the Court of Cassation, the judges of the Paris Court of Appeal finally ruled in favour of the village. According to them, Mr. Szajner's methods constitute "a strategy aimed at depriving the commune and its inhabitants of the use of the name Laguiole". Indeed, the numerous trade marks registered by the Val-de-Marne entrepreneur enabled him to take legal action against local businesses using the name of their commune for counterfeiting.
The Court of Appeal thus annulled twenty trademarks held by Mr. Szajner for fraud. In addition, the judges ordered Mr Szajner, his son, and their company Laguiole to pay €50 000 to the village for non-material damage. The mayor welcomed this decision, which will enable the Laguiole people to "relocate business" to the village.
A mixed assessment for the municipality
For Mr. Szajner's lawyer, the Court of Appeal's decision "does not change anything. Indeed, the entrepreneur retains several trademarks registered at the French and European level. He can still prohibit the municipality and its traders from using the name Laguiole for shoes and clothing.
Moreover, the commune regrets not having obtained a general ban on the use of the name "Laguiole". Today, it would be difficult to reach such a situation. Indeed, the communes have the possibility to set up a surveillance of their name at the INPI, allowing them to be informed as soon as a homonymous trademark is registered. This monitoring allows us to react as soon as the trademark is filed and to file opposition quickly.. But this possibility was created in 2014 by the Hamon law, and was therefore not open to the village of Laguiole at the time of the first deposits.