29 July 2020
Brands update - August 2020 – 6 of 7 Insights
Like most champagne houses, the Taittinger brand originates from the last name of the family who created it. As in many cases where a family name becomes a registered trade mark, a conflict arose here as soon as a Taittinger family member started her own business referring to the Taittinger family name.
In July 2005, Virginie Taittinger – who had been a shareholder and employee of Taittinger for over 20 years – granted her father a mandate to represent her in relation to the transfer of her shares. The mandate was exercised during the change of control of the company in favour of Sof European Hotel Co-Invest Holdings.
The corresponding deed included a non-competition clause of 24 months, as well as an undertaking by the members of the family not to use the name "Taittinger" as a trade mark, trade name, domain name or any other sign, to designate and/or promote any goods or services in competition with all or part of Taittinger's activities.
Virginie Taittinger was dismissed in 2006 from Taittinger. On 14 February 2008, she filed the French trade mark application VIRGINIE T No. 3556674 and launched her own champagne business under the same name. She created a company BM & VT through which to conduct her activities, and referred to her family history and her experience within Taittinger when promoting the new business in the press. Ms Taittinger also registered domain names featuring the words "Virginie Taittinger" which redirected to the website www.virginie-t.com.
The Taittinger group considered that the commercial use of Taittinger by Ms Taittinger, coupled with her marketing strategy of referring to the champagne house, constituted a breach of the deed, trade mark infringement – in particular, claiming the reputation of the earlier trade mark based on Article 715-3 of the French Intellectual Property Code interpreted in the light of Article 5, 2 Directive No. 2008/95/EC to approximate the laws of the Member States relating to trade marks (ie Article L. 715-3 of the French Intellectual Property Code (former version)) – and parasitism. It brought an action against Virginie Taittinger and her company, BM & VT.
The Paris Court of Justice rejected all of Taittinger's claims, and the champagne house subsequently appealed.
The Paris Court of Appeal held Virginie Tattinger liable contractually, considering that her use of the name "Taittinger" within several domain names constituted a breach of her undertakings included in the deed.
However, the other claims based on trade mark infringement and parasitism were rejected. The Court ruled that Virginie Taittinger did not use a sign without due cause taking an unfair advantage of the reputation of the Taittinger trade mark. The Court also found Ms Taittinger's use of the sign – referring to her family origins, professional career, and past experience – wasn't detrimental to Taittinger's distinctive character or reputation.
Additionally, the Court held that the use of "Virginie T" as trade and company names was not an attempt by Virginie Taittinger to benefit from Taittinger's efforts and investments. In any event, her champagne is not unduly associated with Taittinger's champagne.
The French Supreme Court (Cour de Cassation) overturned the Paris Court of Appeal's decision considering that:
The present decision was handed down after the French Supreme Court referred the case to the Paris Court of Appeal.
The Paris Court of Appeal confirmed that Virginie Taittinger could not be bound by the deed's undertaking, as her father could not restrict her use of her last name.
The Paris Court of Appeal ruled that Taittinger had not shown that Virginie Taittinger's use of the name Taittinger was detrimental to, or took unfair advantage of, the distinctive character or the repute of the earlier trade mark.
The Court held that "it is logical and legitimate that Mme T [Virginie Taittinger] should ensure her reconversion in the field of champagne and that in order to do so, she should mention her name, her family origin and her professional background, which necessarily leads her to evoke the TAITTINGER champagne that she has served for more than twenty years, essentially to distinguish it from the new product that she is marketing".
Moreover, the Court indicated that Ms Taittinger always used her name by associating it with her first name in the context of her marketing communications. The Court therefore concluded that although her family was an advantage for the launching of her business, such advantage only came from her birth and her former professional activities rather than from "the capture of the repute of Taittinger's trade mark or of the investments made to value this trade mark".
The Paris Court of Appeal also rejected the claim based on unfair competition, considering that the references made by Virginie Taittinger to the trade and company name of Taittinger were justified by the legitimate reference to her family origins and her former professional activities. Furthermore, the Court considered that Ms Taittinger had shown the investment efforts made by her company to promote the Virginie T champagne.
This case is in line with the numerous cases in the field of last names used as trade marks, such as "Henriot", "Inès de la Fressange" or "Bordas".
Case ref: Paris Court of Appeal, 3 March 2020, Taittinger vs Mrs Virginie Taittinger and BM & VT, No. 18/28501
by Mark Owen
by Julia King