Ongoing trade mark deception does not negate statutory limits on legal proceedings, French court rules

The Court's ruling ended a ten-year trade mark dispute between two French wine makers, Château Cheval Blanc, which registered the word mark Cheval Blanc in 1933, and Chaussié de Cheval Blanc, which has owned the word mark Domaine du Cheval Blanc and a graphic mark of a horse's head since 1973 and 2003, respectively.

Château Cheval Blanc began proceedings against Chaussié de Cheval Blanc in 2008. In 2012, the Bordeaux Court of Appeal confirmed the court of first instance's dismissal of Château Cheval Blanc's claim, and confirmed Chaussié de Cheval Blanc's right to use the name Cheval Blanc in both trade mark registration and in its company name as it was a 'place name'.

In 2014, the French Supreme Court overruled this and the case was sent back to the Court of Appeal.

In 2015, the Court of Appeal held that Château Cheval Blanc should have applied for the revocation of Chaussié de Cheval Blanc's word mark by 2003, thirty years from when it was registered.

Château Cheval Blanc told the French Supreme Court that this was a misinterpretation of the French Intellectual Property Code, and that since the deceptiveness of a mark was unaffected by time nor use, it could be grounds for revocation at any point while the mark is legally registered.

The starting point of this deception was not the date that the mark was registered, the company said, because the deception continued.

However, the Supreme Court rejected this, and all claims by Château Cheval Blanc. The Court said that even though the deceptiveness of a mark was, by its nature, unaffected by time nor use, that does not mean that the civil law action against the owner was also unaffected by time.

The starting point of the civil action was not addressed by the Supreme Court because Cheval Blanc did not mention it in its brief. However, the Court of Appeal in 2015 had already answered that the starting point was set on the day the deceptive trademark was registered.

Paris-based intellectual property expert Emmanuel Gougé of Pinsent Masons, the law firm behind Out-Law.com said: "The French Supreme Court has always allowed wine makers to register a name as a trade mark in connection with their vineyard, even though trademark law usually forbids the registration of geographical indications."

"Difficulties arise when two wine makers use the same name: In 2009 the French Supreme Court restricted the right of wine producers to register such names and, as a consequence, the registered trademarks could be considered as deceptive. This has been quite harsh for some of them, such as Chaussié de Cheval Blanc, who had been using the name for decades. Here, as it sometimes happens in law, it is the statute of limitations that saved them," Gougé said.