By Jaume Mourisco Ayuso, Intellectual Property Lawyer | Litigation Department

Introduction | Background

The company Webtendances, SASU applied for European Union trademark No. 18 856 899 Pierre Cadault for goods and services of class numbers 3, 9, 14, 18 and 25 on 31 March 2023 and it was granted on 21 July 2023.

In response to this registration, the company Viacom International Inc. (hereinafter, Viacom), the holder of the intellectual property rights to the famous television series “Emily in Paris” and, in particular, to the well-known fictional character named “Pierre Cadault” who appears in the series, filed an invalidation action.

Analysis

The applicant for a declaration of invalidity essentially states in their request that the trademark in question exactly reproduces the name of the fictional character that appears in said series and works in the world of fashion and haute couture. And that’s not all: the trademark has also been registered for products related to luxury, haute couture and fashion, which, as the applicant mentions, means the public will inevitably associate this trademark with the iconic television character.

This action demonstrates that by registering the trademark, the trademark proprietor intentionally tried to appropriate the name of Pierre Cadault, thereby taking undue advantage of this character’s newfound reputation, and thus undoubtedly harming Viacom’s interests.

In its request for invalidation, Viacom attached a total of 87 documents, which proved that the name and character of Pierre Cadault was clearly recognised at an international level, both in magazines, promotional advertisements, and other types of records, and the intellectual property rights derived from this character were also owned by Viacom.

The case therefore focused on the fact that the trademark registration in question, as well as the protection over the character of Pierre Cadault thanks to intellectual property rights, had been made in bad faith.

This case is of interest because it once again highlights the fact that, firstly, good faith is presumed until proven otherwise; secondly, the existence of “bad faith” must be proven by the person filing the request for invalidation; and lastly, there is no specific legal definition of what is meant by “bad faith”. Instead, it is understood as a subjective state, which must be determined based on the intentions of the applicant for a European Union trademark. Given the lack of an exact definition, however, there are two cumulative requirements that must be met:

• The action under analysis must clearly reflect an intention that can be described as dishonest,
• And there must exist an objective standard, which allows the alleged action to be evaluated and subsequently be described as being in bad faith.

In the specific case of a European Union trademark application, the present ruling states that bad faith will exist when the applicant’s behaviour deviates from ethical behaviour or honest business and commercial practices. And in this particular case, the Office has understood that applying for the exact name of Pierre Cadault as a trademark for the same products which are the subject of the aforementioned television series, without there being any type of interest and/or known purpose, is irrefutable proof of bad faith in said registration.

Notwithstanding the foregoing, if a business entity has obtained a certain degree of protection due to its own use of the sign in the market, the fact that a third party registers said sign shall be understood to have been done in bad faith with respect to the entity that initially used said sign. An important case in this scope, C-529/07, Lindt Goldhase, is recalled, describing the factors to be taken into consideration:

• The fact that the proprietor of an EU trademark registration knows or should know that a third party is using an identical or similar sign for identical or similar goods that are likely to be confused with the EU trademark;
• The intention of the EU trademark applicant to stop the third party from using the sign;
• The previous level of protection of the third party’s sign and the sign being applied for
• Whether the aim of the proprietor of the EU trademark application was legitimate.

And it is important to note that proving the identity or similarity of the sign in question, as well as of the goods or services it describes, and therefore the existence of a likelihood of confusion, will not be enough to prove the existence of bad faith in the registration. This is where intentions with regards to registration come into play.

In this case, the proprietor of the registration did not respond to the request for invalidation, since it implies, and as understood by the cancellation division, that the intention of the registration was not to use the trademark, but rather only prevent the third party from entering and operating normally in the European market, or, as is the case at hand, to prevent a third party that is already in the market from continuing its activity.

Conclusions

The foregoing, together with the classes for goods and services for which the trademark in question was registered, are none other than those commonly related to merchandising products, and the applicant’s intention was none other than to hinder and obstruct Viacom’s business activity, in addition to appropriating the reputation gained by the character of Pierre Cadault since the premiere of the series in 2020, and which continues to air today.

For all these reasons, the Cancellation Division of the EUIPO understood, as Viacom had proven, that the character of Pierre Cadault is an original character that is protected by intellectual property rights, and given the proven bad faith in the registration of said trademark, the application of Article 59(1)(b) of the EUTMR was appropriate.

Once again, it is important to recall that not only the rights conferred by a prior trademark registration serve as a basis for the protection of trademarks, but copyrights for the defence and protection of intellectual property assets are also relevant, and that those who act in bad faith, end up in a bad way.