Episode 3: Trademark law and presidential elections
UGGC Avocats proposes to decipher the presidential campaign through the prism of intellectual property and personal data, at the rate of an episode every 15 days.
Episode 3: Trademark law and the presidential elections
For this third episode of the series dedicated to the presidential elections, the intellectual property team of UGGC Avocats looks back at news that raises the question of the correlation between trademark law and their use in political life.
We will address two main topics:
I. What are the limits to the use of a trademark in public debate?
II. Are political parties trademarks like any other?
Kärcher takes a stand against the use of its trademark
The eponymous brand of the German company Kärcher has found itself, in spite of itself, once again at the heart of the political debate, “clean with Kärcher”, “go with Kärcher” or “Kärcherize”.
This time, it is the candidate Les Républicains who associated the Kärcher brand to her campaign speech evoking delinquency and insecurity, by proposing to “bring the Kärcher out of the cellar” to “clean the neighborhoods”.
The company, which markets high-pressure cleaners, issued a press release to ask, for the umpteenth time, that its brand not be used in the public debate:
“The Kärcher brand is not the “banner” of any political party, but the exclusive property of the Kärcher companies. It can and must only be used to designate the products of the Kärcher companies. Kärcher thus deplores the disregard of certain political figures for its rights. “1
But can Kärcher really oppose the use of its trademark in the political arena? And if so, on what grounds?
i. Damage to the brand image
First, Kärcher complains about the repeated use of its trademark in association with negative themes (violence, insecurity, danger, etc.). This is not a direct infringement of the trademark but rather an infringement of the trademark’s image.
For several years now, the French Supreme Court has recognized the existence of moral prejudice for a company,2 which may result from wrongful conduct aimed at damaging its image or its reputation,3 particularly when the latter carries strong values. One example of this is the case of a company that owned a chewing gum trademark against another company that applied for the registration of a trademark of the same name for tobacco products. The court considered that such a registration “would be detrimental to the image of the mark” and “the image of health, dynamism and youth associated with it”.4
In practice, therefore, Kärcher could seek compensation for its moral prejudice related to the infringement of its trademark image on the basis of Article 1240 of the Civil Code,5 or even, subject to proving its reputation, on the basis of the infringement of the image of a renowned trademark.6
ii. Risk of revocation of the trademark owner’s rights
The use of the Kärcher trademark in everyday language to designate “cleaning” in a generic way, both literally and figuratively, constitutes a real threat to the ownership of the rights.
The Intellectual Property Code provides for the revocation of the rights of the owner of a trademark that has become, by its own doing, customary in the trade of the product or service.7
The effects are serious, because the usual designation results in the loss of trademark rights. Indeed, one of the essential functions of a trademark is to guarantee the origin of the goods and services it designates. However, by becoming commonplace, the trademark loses this essential function.
These trademarks, whose designation has become commonplace, are also called generic, and they are numerous: shopping cart, text message, refrigerator, scotch… to name but a few.
As the Intellectual Property Code specifies, in order for a trademark to lapse due to its usual character, a fault must be imputed to its owner. In practice, the fault generally lies in the owner’s lack of reaction, who did not act to correct the misuse of its trademark.
The company Kärcher is therefore perfectly legitimate to publicly oppose this generic use through awareness and communication campaigns. It is in its interest to take all useful measures in order not to incur the lapse of its trademark.
Politics, a marketing product?
Brands are invading the political landscape for communication purposes.
All the signs that can make up a brand become real rallying symbols. In a fragmented democratic context, in which different political forces are emerging, it becomes essential for parties to identify themselves to the public.
As we have seen, one of the essential functions of the brand is to guarantee the origin of products or services, distinguishing them without confusion from others.
The names, logos and slogans of political parties carry symbolic stakes, the protection of which requires trademark law.
i. On your marks…
It will not have escaped the attention of voters that parties are fond of name changes, which often reflect a turning point in their history.
In 2017, En Marche! changed its name to La République en Marche! A year later, the National Front became the National Rally. In the Socialist Party, the possibility of a name change has become a recurring theme.
The example of the change of name of the Union pour un mouvement populaire (“UMP”) to Les Républicains allows us to return to certain intellectual property issues.
A trademark can only be registered if, among other things, it is lawful.
The intellectual property code excludes from trademark protection coats of arms, flags and other emblems of the States of the Union, official signs and hallmarks of control and guarantee adopted by them, as well as any imitation from a heraldic point of view.8
The Les Républicains party had registered a semi-figurative trademark for a wide range of goods and services, including jewelry, clothing and printing, with the following logo:
The application for registration was partially rejected by the INPI for all of these goods and services, with the exception of printing products, posters, leaflets and brochures with an electoral purpose or character.
The Paris Court of Appeal, seized by the political party of an appeal against this decision, held that the presentation of the figurative element “in the form of straight, vertical bands of equal width on the three colors blue, white and red, [recalled] by their arrangement the tricolor flag”. Moreover, this imitation of the national emblem is reinforced by the verbal element “Republicans”, France being a Republic.9
The Court of Appeal thus rejected the appeal. The semi-figurative mark can therefore only be used for goods and services related to political activity.
There is an ambiguity in the INPI’s reasoning, which the Court of Appeal took up in its reasoning, which leads to the registration of a trademark with a sign that includes the tricolor flag, but only for its political activity – to the exclusion of any other activity. However, either the mark includes the French flag, in which case it cannot be protected as a trademark, regardless of the class or classes in question; or it does not include it and can therefore be registered, without distinction, for all classes.
ii. The “R’s” of discord
Political opposition is not only exercised through the traditional debate of ideas.
Last January, the lawyer for the Résistons! party put the Reconquête! party on notice to stop using a logo containing the letter R, a red exclamation mark and the colors of the French flag.
On the left, the logo used by the party Résistons ! – On the right, the logo used by the party Reconquête!
According to the lawyer of the party Résistons! the logo used by the party Reconquête! infringes the rights of his client. It is also specified by the lawyer of the party Résistons! that this logo was the subject of a registration as a figurative and word mark, without this information having been able to be verified.
The Reconquest! party, for its part, has only registered the word mark “reconquest”, to the exclusion of any logo.
Assuming that the Résistons ! party is indeed the owner of a trademark on the “R !” logo, could trademark infringement constitute a serious basis for infringement proceedings?
The Intellectual Property Code punishes, as an infringement, the use in the course of business “of a sign identical or similar to the trademark and used for goods or services identical or similar to those for which the trademark is registered, if there is, in the mind of the public, a risk of confusion including the risk of association of the sign with the trademark. “10
The case law recalls that this likelihood of confusion is assessed globally, taking into account all relevant factors according to the case in question. Thus, a low degree of similarity between the signs may be offset by a high degree of similarity between the goods and services, and vice versa.11
In addition, the assessment of the likelihood of confusion is made in relation to the criterion of the consumer of average attention, with reference to the non-perfect image that he has retained in his memory of the imitated sign. It is also customary to take into account the public targeted by the goods or services in question. When a product is intended for the general public, the case law will tend to refer to a lower level of attention – contrary to a product intended for professionals, whose level of attention is higher.12
Insofar as the public targeted by the political parties can be considered as any French citizen, aficionado of politics or not, what would be the appropriate attention reference? Could the average voter be misled by the proximity of these signs and, in fact, be led to confuse the ideas and proposals of the Reconquest! and Résistons! parties?
Finally, do political parties use their trademarks in business? The traditional jurisprudence on this question considered that use in the course of business, depending on the case, as use tended to obtain a direct or indirect advantage of an economic nature.13 However, such a definition does not seem applicable to the activity of a political party.
In a recent decision, the Paris Court of Appeal nevertheless opened up the notion of use in business life, in a dispute concerning the use of a trademark registered by a trade union. It thus considered that “although it is certain that the parties are not commercial enterprises, it is nonetheless true that the CFDT sign was used in the context of its union activity and in order to promote it and the team that makes it up”.14 A solution that could therefore be transposed to political parties.
These outstanding questions could be decided by the judge since the Résistons! party recently indicated that it had approached lawyers in order to initiate “legal proceedings on the grounds of imitation and risk of confusion of the electorate. “15
Next episode, in 15 days ….
The intellectual property team of UGGC Avocats
2. Court of Cassation, Commercial Chamber, May 15, 2012, No. 11-10.278
3. See especially Cass. com., 7 mars 2018, n° 16-16.645 : Bull. civ. IV, n° 31
4. OHMI, affair R 283/1999-3 of April 25th, 2001, Hollywood.
5. Article 1240 of the Civil Code: “Any act of man, which causes damage to another, obliges the person by whose fault it occurred to repair it.”
6. Article L713-5 of the Intellectual Property Code : «Ne constitue pas une contrefaçon mais engage la responsabilité civile de son auteur l’usage dans la vie des affaires, pour des produits ou des services, non autorisé par le titulaire d’une marque notoirement connue au sens de l’article 6 bis de la convention de Paris pour la protection de la propriété industrielle :
1° A sign identical to the mark and used for goods or services identical to those for which the mark is well known;
2° A sign identical or similar to the mark and used for goods or services identical or similar to those for which the mark is well known, if any, in the public mind,
3° A sign identical or similar to the mark and used for goods or services identical, similar or dissimilar to those for which the mark is well known, if such use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the renown of the mark.”
7. Article L. 714-6 of the Intellectual Property Code: “The owner of a trademark that has become, as a result of his actions, a trademark shall forfeit his rights:
a) The common commercial designation of the product or service;
b) Likely to mislead, particularly as to the nature, quality or geographical origin of the product or service.”
8. Article L. 711-2 °6 of the Intellectual Property Code and Article 6 ter of the Paris Convention for the Protection of Industrial Property
9. Paris Court of Appeal, January 10th, 2020, n° 18/28737
10. Article L. 713-2 of the Intellectual Property Code
11. CJCE, 29 SEPT. 1998, CANON KABUSHIKI KAISHA c/ METRO-GOLDWYN-MAYER
12. See for example: ECJ, June 22, 1999, Case C-342/97, Lloyd Schuhfabrik Meyer v. Klijsen Handel, EU:C:1999:323 and CA Paris, Feb. 17, 2012, No. 10/20 967
13. Court of Cassation, Commercial Chamber, May 10, 2011, n° 10-18173
14. Paris Court of Appeal, Pole 5, Chamber 2, February 7, 2020 n° 18/14427