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CJEU: Forge de Laguiole owns Laguiole trade mark, but only for cutlery and knives

French knife manufacturer Forge de Laguiole can protect the trade mark Laguiole when it is used to refer to knives and cutlery, but not in other areas where the company does not do business, the Court of Justice of the European Union (CJEU) has said.06 Apr 2017

The trade mark has been under dispute since Forge de Laguiole asked the European Union Intellectual Property Office (EUIPO) to cancel registration granted to businessman Gilbert Szajner in 2005. Szajner used the trade mark not just for cutlery, but for 38 different classes of product, including clothes, furniture and toys.

In 2011 EUIPO granted Forge de Laguiole’s application on the grounds of the likelihood of confusion between the name of that company and the trade mark Laguiole. It declared the mark Laguiole invalid except in relation to telecommunication services.

Szajner responded with an action before the General Court of the EU seeking to have EUIPO’s decision annulled. The General Court agreed to do so, but only partially: Szajner could not use the trade mark for goods in the knives or cutlery sectors, but could maintain it for other business activities, it said.

The CJEU, Europe's highest court, has now confirmed this judgment by the General Court.

The General Court must apply the rules of a member state's national law as it was interpreted at the time it makes its decision, and was correct in finding that, under the applicable French law, the protection Forge de Laguiole can derive covers only the business activities that it actually pursues.

Although the General Court did not lay out criteria used to identify these activities, it took account of the nature of the goods, their intended use, purpose, customers and distribution channels, the CJEU said.