Touch/Texture - Marques 3D et autres marques non-traditionnelles = 3D trademarks and other non-

Fresh Inc. owns a registration for cotton-texture paper wrapped around oval-shaped soap and tied with a silver-colored wire that is coiled around and fastened to a semi-precious stone bead.While this is not exclusively a

texture trademark, the cotton-textured paper is protected by the registra-tion.

Fig. 20: U. S. Ser. No. 2,682,410

Description of Mark: The mark consists of cotton-textured paper wrapped around oval-shaped soap and tied with a silver-colored wire that is coiled around and fastened to a semi-precious stone bead.

The David Family Group LLC owns a registration for a leather texture wrapping around the middle surface of a bottle of wine.

Fig. 21: U. S. Reg. No. 3,896,100

Description of Mark:The mark consists of a leather texture wrapping around the middle surface of a bottle of wine. The mark is a sensory, touch mark

Why Non-Traditional Trademarks Matter to the Luxury Industry

Olivia DHORDAIN¹

I have been asked to provide a perspective on why non-traditional trade-marks matter to the luxury Industry. I will immediately drop any pre-tense at objectivity and will confess to having a bias–the bias of a passion for our Maisons, their creativity and the craftsmanship and skill they have nurtured over several generations of employees.

Let me begin with a short introduction to Richemont: founded in 1988 by Mr. Anton Rupert, it is one of the world’s leading luxury groups and owns several of the world’s prominent companies in the field of lux-ury goods with particular strengths in jewelry, watches and writing in-struments. If Richemont as a Group likes to remain discreet, you will no doubt have heard of its prestigious Maisons including Cartier, Van Cleef & Arpels, Montblanc, Jaeger LeCoultre to name just a few.

Through its Maisons, Richemont totals more than 2000 years of history and passion for beauty, craftsmanship and elegance. I more modestly joined Richemont’s Intellectual Property Team some 12 years ago but over this small decade, I have been a close witness to the transformations and mutations of a luxury sector which has had to keep reinventing itself to remain exclusive and desirable in a hyper-branded and increasingly di-gital and reproducible environment where traditional luxury codes have been imitated and systematically adopted by fashion brands but also cof-fee brands, home appliance brands, etc.

One such mutation has been the emergence and reinforcement of «lux-ury icons». Religious Icons are paintings believed to carry and embody a part of the mystical qualities of the Saint depicted and are deeply adored and revered by the faithful. Similarly, luxury icons, difficult to describe, but immediately identifiable are a sort of «embodiment» of the brand.

Once an icon, the product becomes a symbol of the brand in and of itself.

To wear it is to display a «belonging» to a brand, all the while avoiding the vulgarity of a hyper-branded attire.

1 Deputy Chief IP Counsel, Richemont Group. The oral style of this presentation was deliberately maintained.

Richemont is fortunate to count many such «icons»–here are just a few:

• The Cartier Santos watch, first wrist watch designed in 1904 for avia-tor Santos Dumont;

• The Love bracelet and Juste un Clou, designed in the 70 s by designer Aldo Cipullo for Cartier;

• The Ballon Bleu–more recently created in 2006 but already a product that has marked its decade worldwide;

• Panerai’s Luminor, the epitome of Italian design of the 50s;

• Jaeger Lecoultre’s Reverso, created in the 1930 s for polo payers and a pillar of the Maison ever since;

• And of course:Van Cleef & Arpel’s Alhambra, designed in May 1968, a testimony to the free thinking hippie flower power movements of the time.

All these icons share some common traits: They have a unique history of creation which consumers aspire to

• They have endured over time;

• They have remained consistent over time;

• They are constantly nurtured and kept alive through regular invest-ments (relaunches, advertising campaigns, PR events etc…);

• They are a financial «manna» for the brands– a manna that is con-stantly reinvested in new jobs, new creations…and a constant quest to produce the next icon through an impressive churn of new creative collections.

As IP professionals, all your warning signals will have started blaring. It follows quite naturally that all the qualities (and apparent IP weaknesses) shared by these icons make them the perfect target for those who would want to profit unduly from that manna.

And indeed, over the last five years, in our sector, we have seen an explo-sion of «clever copycats» who have understood all the advantages of copying an icon:

• No need to feature a brand name–the icon speaks for itself–and so classic trademark infringement is no longer a risk worth taking;

• The designs are historical–so in all likelihood the copyright or design rights have expired–it follows that to copy the icon is legal?

• Offering copies also enables these actors to benefit from the aura of the campaigns around the original items–promotional efforts are sim-ply not needed.

We have observed a true professionalization of these lookalike actors – particularly in China, but not only and this multiplication of attacks on our iconic designs are diluting and parasiting our vital luxury assets.

This explosion of lookalike products also suggests that we are observing a radical shift in the value of our brands–could it be that the economic va-lue is transitioning away from our traditional word marks to the actual shape of our iconic products?

So how do we tackle these attacks on our «soft underbelly» and what are our available tools?

I’d like to take you on a little world tour of the different IP solutions we have explored and successfully implemented and hopefully this tour will illustrate why, all the while exploring options, we have sought tirelessly to secure 3D marks on our icons around the world wherever and when-ever possible.

Greece:Ten years ago, copies of the Alhambra were rampant in Athens.

High quality copies manufactured locally and sold in masses to tourists– notably a jeweler named MAMOGLU. The Alhambra was created in May 1968, so clearly, no design rights were available.We logically turned to copyright. But before addressing any hard IP issue, the question of the applicable law had to be examined. Article 5 of the Bern Convention is drafted in such a way that the question of the law applicable to the own-ership and originality of the work is open to debate. If most jurisdictions tend to prefer applying their own local laws to these issues, some, more adventurous judges, accept that the laws of the country of first disclosure of the work should apply. We took a chance with the Greek judges and managed to convince them to apply French law to the question of own-ership and originality. In this way, the Greek Courts were the first to ac-knowledge that the Alhambra was an original collective work as pro-vided for by French law with all IP rights being vestedab initioin the company with no need to establish a chain of rights from a single author to the moral entity. This judgment–confirmed on appeal–has been the foundation for all our actions in Greece ever since.

Roughly at the same time, we were engaged in two full scale litigations against copycats of the Alhambra in theUnited States.

In a case which opposed us to Heidi Klum, the whole range of the Alham-bra collections were being slavishly imitated by the super model and con-fusion was rampant.We developed similar arguments based on copyright with similar debates on the applicable law.Witnesses were deposed and a full history of the creation of the Alhambra consigned.We also developed arguments on the basis of trade dress and secondary meaning and once these two (very expensive) litigations were over, we sought something more efficient.

Happily, in the USA, the notions of trade dress and secondary meaning are now well established and this has enabled us to file and successfully register not only the Alhambra motifs but several other of our icons as 3D trademarks–most recently the JUSTE UN CLOU.

What has this enabled? We can now work with the customs to seize pro-ducts «en masse» at the borders. And even in the context of our judicial battles, we are no longer having to engage in complex discussions on ap-plicable law and originality, similarity and confusion. Indeed we have left the territory of copyright or design and have left aside the questions of novelty and originality. The debate now revolves – more relevantly – around the questions of acquired distinctiveness and harmful dilution.

The burden is on us to prove this distinctiveness and the process is ardu-ous–and these rights may always be challenged or wane with time and non-use. But for the time being, we have these tools and we are able to efficiently tackle those usurpers who would benefit without any effort from our Maisons’continued efforts to keep their icons alive.

The Chinese Courtsrecently showed an astute understanding of what is at stake in a case concerning a copy of the Cartier Ballon Bleu watch.

Now, the Ballon Bleu watch was created in 2006 –specifically designed for the Chinese market, this still young design took off beyond all expec-tations and has unquestionably become one of Cartier’s icons. If the Bal-lon Bleu is still protected thanks to its registered design in most countries, designs expire in China after just 10 years. And it was no surprise that the year the design expired, lookalikes of the Ballon Bleu started to flood the market. We anticipated this and brought a case against a Chinese com-pany, Binger, on the basis of unfair competition.We were rewarded, after two years of civil litigation, with a favourable judgment from the Nanjing Intermediate People’s Court which clearly acknowledged that the at-tempt to reap Cartier’s commercial efforts by usurping such a renowned product was simply unfair. If this judgment has clearly helped us to ward

off some copy cats, and enables us to obtain takedowns from Chinese market places, it is clearly not a mass enforcement tool.

So we are currently battling to obtain a 3D trademark in China on our Ballon Bleu based on acquired distinctiveness. Admittedly, it would be a first in China for a watch–and the conditions demanded of the office sometimes seem unreachable–but we are encouraged by the recent deci-sions concerning the Dior perfume bottle. And clearly, the battle must be fought to the end as only a 3D trademark will provide a tool strong en-ough to tackle the sheer scale of the copies we are currently seeing.

In theMiddle Eastand more specifically the UAE and Saudi Arabia, of-fices have been more liberal in accepting the registration of 3D trade-marks on our iconic pieces–and we rely heavily on these tools to orga-nize seizures and raids with the local authorities in an effort to limit the rampant copies of Alhambra, Amulette and Love jewellery. In a recent case, which went all the way to the Dubai Court of Cassation, the judges upheld our 3D trademark on Amulette and confirmed the infringement of our rights by jewellery Hyatt, thus comforting us in the solidity of these rights.

Coming back to Europe, our trademark offices seem deaf to our predi-cament, securing a 3D European trademark is close to impossible (prov-ing acquired distinctiveness in 28 countries is a soul destroy(prov-ing perspec-tive) and the Swiss trademark office still seems unduly wary of granting non-traditional trademarks.

Thankfully, we find some consolation in our judges and their understand-ing of laws on unfair competition.German Courtshave perfectly under-stood the economic value of our icons and offer us an efficient tool in the guise of preliminary injunctions based on unfair competition. InFrance, parasitic behavior has proved a very reliable tool to tackle usurpers of our iconic creations but nothing compares to the strength of a 3D trademark to tackle the mass. The recognition by the Cour de Cassation of our screw device trademark to protect the LOVE collection is invaluable.

It effectively provides us with a strong title of right and a presumption of right which changes the burden of proof. This right enables us to work usefully and efficiently against slavish imitators.

In Switzerland–the country which is home to our manufactures and which fights to defend the Swiss Made embodied by our Maisons’icons and those of our respected competitors–we are observing some very ag-gressive attacks by Swiss actors who are in effect adopting the same

mod-el as that of Chinese copycat businesses. We have brought proceedings against one such actor and the case is pending as I write.²Without com-menting on the specifics of the case, it is hard to imagine how the slavish imitation of immediately recognisable watch icons from Rolex, Aude-mars Piguet or Panerai can be deemed a fair practice and indeed, it is dif-ficult to understand what economic value such businesses are creating– why should they be exonerated from the duty of being creative and tak-ing creative risks? Why should that burden lie only with legitimate and historical Maisons of the luxury sector? If, today, 3D trademarks still seem a remote dream in Switzerland, we remain confident and trust that our home judges will use the Swiss Unfair Competition Act to sanction such blatant copies. The alternative would in effect mean that our Swiss luxury industries are better protected by Chinese judges than our own– such a scenario simply seems unimaginable.

***

I hope this world tour will have given you a taste of the arduous task we face as IP Counsels to protect our luxury icons. Of course, each case ta-ken individually is a private counsel’s dream – sophistication of argu-ments, intellectually stimulating IP concepts, long and complex proce-dures…and of course, fees, fees, fees…and for the same reason, each of these cases is an in-house counsel’s worst nightmare as our objective is to avoid mass dilution in a cost efficient way to preserve our Maison’s key economic assets. It is becoming clear that these sophisticated judicial procedures simply cannot help us achieve our goal. Our experience has shown that 3D trademarks are by far the most efficient tool to tackle loo-kalikes efficiently–both on and offline.

Sadly, our own home ground–the geographical zone which hosts our manufactures, HQs and many of our employees–is still very reluctant to grant us the protection we need to fight against these copycats.

Some continue to argue that 3D trademarks are an artificial way to extend copyrights or design rights. Some argue that all IP monopolies must come to an end…But is it more shocking to claim a monopoly on a

dis-2 On 7th May 2019, Civil Court of Genera rendered a preliminary injunction ordering that the defendant immediately cease and withdraw all manufacture and sales of the litigious watches , acknowledging that the slavish imitation of the Panerai watch and the behaviour of the defendant was likely to be considered an act of parasitic beha-viour under the unfair competition laws of Switzerland (Ch.Civ. Cour de Justice de Genève, 07.05.2019, C/27801/2018, ACJC/704/2019).

tinctive product that has become iconic through years of investments than it is to claim a monopoly on a simple word picked out of a diction-ary? Over the years, trademark laws with their checks and balances and their careful application by offices and Courts have demonstrated the va-lue that trademark rights bring to consumers by protecting legitimate companies that reinvest constantly in their brands to generate economic value and growth. The dictionary has not been privatized as a result of the significant number of word marks around the world. Our language has not been in any way impoverished…. And so perhaps we can consid-er that non-traditional trademarks should be given the same chance as tra-ditional word marks – if only to reflect the reality of a new business world where the economic value is inexorably shifting away from words and letters towards images, sounds, products and even smells which to-day’s consumers recognize more and more readily as signs of origin.

The laws have acknowledged–and now we need our universities, insti-tutes and courts to more readily accept–that from time to time, a product becomes more than just a passing design or best seller… it becomes, through enduring and important investments, a symbol, an icon, a rally sign. It embodies a brand so powerfully that the product has left the realm of copyright or design and has mysteriously but unquestionably entered the realm of trademarks…the product has become in and of itself a distinctive sign which the customer can and does recognize as a sign of origin. From that moment, the product acts as a trademark which the con-sumer looks to as a guarantee of origin and deserves to be protected as such.

And that is why I will continue to defend the position that this rarity, which generates so much economic value, deserves a strong IP protection which only 3D trademarks can provide.

Marques non traditionnelles, leçons de la pratique judiciaire (Do’s and Don’ts)

Guillaume FOURNIER*

Nous avons jusqu’à présent beaucoup insisté sur la procédure d’ enregis-trement d’une marque non traditionnelle. Si cette procédure est bien évi-demment très importante en pratique, elle ne concerne qu’un moment re-lativement bref dans la vie d’une marque. En effet, en matière de marque non traditionnelle, il y a fréquemment un «avant» l’enregistrement, puisque dans beaucoup de cas on parle de marques imposées sur le mar-ché. La marque a donc eu une longue utilisation préalablement à l’enregis-trement. Le sujet qui nous occupe est cependant l’«après» enregisl’enregis-trement.

Cette période peut être longue, puisqu’il n’y a théoriquement pas de li-mite temporelle à la protection à titre de marque. En matière de marque non traditionnelle, il arrive cependant fréquemment qu’un tribunal mette brutalement fin à l’existence de la marque enregistrée. Le risque d’une protection exorbitante par les marques non traditionnelles soutenu par certains s’avère donc à notre sens absolument infondé.

Le sujet qui nous occupe est donc la vie judiciaire de la marque après son enregistrement. Nous essaierons dans ce contexte de voir quelles sont les principaux écueils à éviter et les meilleures stratégies à mettre en place pour valoriser au mieux, au niveau judiciaire, une marque non tradition-nelle.

Nous ferons tout d’abord quelques distinctions en matière de mise en œuvre judiciaire (I). Nous parlerons ensuite de la protection en procé-dure ordinaire (II) et par les mesures provisionnelles (III). Nous nous in-téresserons ensuite plus particulièrement aux bases légales (IV) ainsi qu’aux moyens de preuves (V). Nous terminerons par quelques réfle-xions sur les stratégies internationales (VI) qui peuvent être mises en

Dans le document Marques 3D et autres marques non-traditionnelles = 3D trademarks and other non-traditional trademarks (Page 122-138)