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Fabian Klein of Pinsent Masons said the Court of Justice of the EU (CJEU) should confirm that the impression considered to be left on consumers by trade marks should be assessed by looking at what they might confer about the characteristics of goods or services those marks cover in tandem with what they might also confer about the companies behind them.

Providing that clarification would account for the different legal functions of a trade mark, he said.

Klein was commenting after advocate general Nicholas Emiliou issued his non-binding opinion in a trade mark case that has come before the CJEU – and ahead of the CJEU issuing its formal judgment in the case in the months ahead.

The case referred to the CJEU involves a dispute that has arisen in France over trade mark rights asserted in relation to, among other things, luxury leather accessories. The dispute, which has reached the French Supreme Court, is between rival manufacturers Fauré Le Page Paris SAS (FLP Paris) and Goyard ST-Honoré SAS (Goyard).

FLP Paris was established in 2009, but Goyard claims that a trade mark the company has registered gives consumers the misleading impression that company was established in 1717 and that, as a result, the goods it produces that are covered by the mark are made according to the know-how of a centuries-old company and are of a certain quality. Goyard has argued that this runs contrary to French and EU trade mark law.

EU trade mark law provides that applicants should be refused registration of trade marks that “are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service”. Where trade marks of that kind have already been registered, they are liable to be declared invalid.

The Fauré Le Page brand is centuries old. The ‘Fauré Le Page’ trade mark previously belonged to a company called Maison Fauré Le Page, which was dissolved in 1992. Maison Fauré Le Page had sold leather accessories in Paris since 1716. FLP Paris acquired the mark in 2009 from the company that it was transferred to when Maison Fauré Le Page dissolved.

Subsequently, FLP Paris registered further trade marks for ‘Fauré Le Page 1717’ and one of its sister companies began selling leather goods bearing that branding in a shop in Paris and within a department store. Goyard asked the French courts to declare the Fauré Le Page 1717 trade marks invalid.

Goyard was initially unsuccessful with its court action in France, but in 2021 the Paris Court of Appeal sided with it. Fauré Le Page appealed against that judgment before the French Supreme Court, which has now asked the CJEU to help it resolve the dispute by clarifying how EU trade mark law is to be interpreted. To help the CJEU in that task, advocate general Emiliou was assigned to examine the legal questions the case raises and issue a non-binding opinion. That opinion was published last week.

According to advocate general Emiliou, EU trade mark law is to be interpreted as meaning that the inclusion, in a trade mark, of a year which may be understood by the public as indicating the year of establishment of the trade mark’s proprietor, when that is not the case, cannot, in itself, lead to the invalidity of that mark.

Instead, Emiliou said, a trade mark can only be declared invalid on the basis that it deceives the public if it is “of such a nature as to deceive the public as to a characteristic of the goods or services that it covers and must constitute a sufficiently specific designation of that characteristic”. He added that any circumstance external to the mark itself or the list of goods and services covered by it, as presented at the time of the application for registration, should not be taken into account in that assessment. This includes the actual year of establishment of the trade mark’s current owner, he said.

Klein said the opinion “does not consider the full range of functions that a trade mark serves”.

“It is standing case law that the primary function of a trade mark is to indicate the origin of the goods, and thus to link it to a specific economic operator,” Klein said. “Besides that, it is acknowledged that a trade mark also has a quality function and an advertising function. True, the provisions prohibiting deceiving trade marks focus on elements of the goods or services themselves, not the company behind it. However, a comprehensive trade mark system needs to consider all different trade mark functions, including during the registration phase. I am therefore not fully convinced that the characteristics of the goods or services can or should be separated from the characteristics of its commercial origin.”

“This seems like an artificial separation that consumers would not make – especially not in the area of luxury goods where prices are rarely justifiable by the characteristics of the goods alone, separated from the company and its reputation,” he said.

Klein said that, in Germany, even if the courts took the same view as advocate general Emiliou, the use of brands such as the trade marks at issue in this case might be liable to challenge under unfair competition laws.

He said: “Unfair competition laws prohibit the conveying of false information about the company behind the product. So, even if Fauré Le Page were able to keep its trade mark, the use of the ‘1717’ element of that mark on its products could be prohibited on the grounds of unfair competition.”