Last stop for the Orient Express?

The French company “Compagnie international des Wagons-Lits” (“CIWLT”) is particularly known for its night-trains and its mythical and historical “Orient-Express”, a symbol of luxury and comfort.

CIWLT uses the (above left) sign including the terms “COMPAGNIE INTERNATIONAL DES WAGONS-LITS ET DES GRANDS EXPRESS EUROPÉENS” on its trains.

CIWLT filed the French semi-figurative trademark No. 96619149 consisting in the same logo, but in black and white (above right).

The trade mark was originally filed on 28 March 1996 for class 39 services, namely transport and travel related services, as well as for goods in classes 3, 8, 9, 11, 14, 20, 28, 29 and 30. CIWLT granted an exclusive licence to “Wagons-Lits Diffusion” (“WLD”) for luxury goods and articles and then partially assigned the trade mark to WLD in relation to goods in classes 3, 8, 9, 11, 14, 20, 28, 29 and 30.

The Orient Express is still a great source of inspiration, as shown in a commercial named “Train de nuit” for the Chanel No. 5 Perfume with the French actress Audrey Tautou (the main actress of the “Amélie” movie). This promotional movie portrays the actress in an encounter with a young man between the Limoges and Istanbul stations.

WLD considered that the logo the subject of the above-registered trade mark was reproduced on the train and that the terms “COMPAGNIE INTERNATIONAL DES WAGONS-LITS ET DES GRANDS EXPRESS EUROPÉENS” were partially but clearly visible during two sequences of the advertisement.

In 2014, WLD thus brought a trade mark infringement action – claiming the reputation of the French trade mark No. 96619149 in relation to consumer goods – as well as an action for parasitism (an action in respect of a third party trying to benefit from someone else’s reputation) against Chanel before the Paris court of first instance.

On 22 May 2018, the Paris court of appeal confirmed the court of first instance’s decision rejecting all WLD’s claims.

The court considered that WLD failed to show the repute of the trade mark which is critical as this allows the owner of a trade mark to prohibit its unauthorized use by a third party beyond the goods and services it designates if such use is likely to cause him prejudice or if such use constitutes unjustified exploitation of the trade mark (Article L. 713-5 of the French Intellectual Property Code).

In its decision, the court stated that a trade mark enjoys a repute when it is known to a large part of the public and when it has a power of attraction that is independent of the goods and services it designates, these: conditions having to be met at the time of the alleged infringement. In this respect, the following must be taken into account: the seniority of the trade mark, its commercial success, the geographical scope of its use, the advertising investments made, references to the trade mark in press and online articles or the existence of polls showing consumers’ knowledge of the trade mark.

Here, the appeal judges considered that the documents provided were not sufficient to show the repute of the French trade mark No. 96619149 as WLD did not show that the French trade mark “is itself, taken in isolation, without reference to the world of trains and in particular to the name ‘Orient-Express’, known to a large part of the public and endowed with the alleged power of attraction”: i) the repute of the trade mark was too old to show that the trade mark is currently known to a large part of the public; ii) certain materials were dated after the litigious acts, not dated or include other figurative elements.

WLD also provided the alleged turnover it made from 2000 to 2010 to show the sales of goods using WLD’s monogram, but the court considered in its decision that WLD did not show that such sales are only due to the trade mark.

WLD further provided a poll to demonstrate the repute of the trade mark. However, the appeal judges considered that this poll cannot be taken into account as it relates to the blue and gold logo rather that the trade mark at issue and the survey participants do not constitute the relevant public. The participants were people over 50, retired people or people falling into “favored socio-professional categories”. Here, the relevant public is the public targeted by the goods designated by the trade mark, namely consumer goods so that the relevant public is the general public.

The Paris court of appeal rejected WLD’s claim for parasitism because the verbal and figurative elements of the trade mark appear in the advertisement in a “fugitive and briefly manner” and “as a decoration” whereas the CHANEL sign is omnipresent. Furthermore, a contract between the owner of the train (Venice Simplon-Orient-Express) – which was duly authorized to use the name “COMPAGNIE INTERNATIONAL DES WAGONS-LITS ET DES GRANDS EXPRESS EUROPÉENS” as well as the sign at issue – and the producer of the advertisement authorized Chanel to show elements of the train including its decoration.

This decision is in line with the strict French case-law on the assessment of the repute of trade marks.

Case Ref. Paris court of appeal, 22 May 2018, No. 16/17580