France - in a recent ruling from the Paris Court of Appeal on the 22nd of September 2017, the French luxury fashion house Balenciaga has been dealt a deal and blow ruling, losing the right to the use of one of its trademarks in France, but seeing the courts acknowledge the features of the brands tote bags as being capable of protection by copyright.

Balenciaga sued Leslycuir, the Chinese leather goods distribution company, for infringement of copyright and trademark for importing into France leather goods seized at customs - that the luxury brand claimed had infringed their rights.

In particular, the claims revolved around four bags 'Baby Daim', 'Revers', 'Classic Sunday', and 'Classic Tool.' Iconic style classics from Balenciaga recognisable thanks to their distinct ornamental zip and pocket feature - created in August 2001, by Nicolas Ghesquière, then artistic director of Balenciaga.

Background

On May 6, 2015, the Paris based fashion house Balenciaga lodged a complaint against the company Leslycuir at the Tribunal de Grande Instance of Paris for infringement of copyright, trademark infringement and parasitism. By contradictory judgment dated June 23, 2016 the Tribunal de Grande Instance of Paris: rejected the brands claim to copyright infringement on the claimed bags, and followed with a cancelation of the French brands figurative trademark mark No 134003896 (shown below) on the grounds of a lack of distinctiveness. The company Balenciaga appealed the decision asking the court to quash the judgment of 23 June 2016.

Copyright Protection

In the latest judgement from the Court of Appeal (September 22nd 2017), the court confirmed the earlier judgment of the Tribunal de Grande Instance of Paris regarding cancellation of the brands trademark, but regarding copyright, in contrast to the earlier ruling on the matter, held instead that the brands Baby Daim and Revers bags are original and thus protectable by copyright.  In particular, the court argued that the choice of elements on each bag: “the shoulder strap attached by two rings and a hook, the positioning of the zipper and pocket on both bags and in addition, the former of the rectangular type envelope flap on the ‘Revers’ bag were purely arbitrary choices, based on an aesthetic preference bearing the imprint of the author's personality - which highlights originality," (a prerequisite for copyright, rather than mere functionality) and for this reason, deemed both bags capable of copyright protection.

Copyright infringement/Counterfeiting

Despite this acknowledgement however, in regards to the courts assessment of infringement, looking at the similarities between the two bags, the courts noted that the elements of the disputed bags sold by the company Leslycuir, presented: "significant differences which results that the overall visual impression of the two bags is not identical.” For example, with regard to similarities between the Baby Daim bag, and the alleged Chinese companies Leslycuirs version, the courts noted, pointing to specific differences in features such as the 'stitching,' 'metal rivets,' 'strap' and 'buckle' that the Leslycuir alleged version of the bag: “does not present exactly the same shape and outline as that of the company Balenciaga,” and for this reason there was no counterfeiting.

Note: New French legislation adopted in 2014 to strengthen the fight against counterfeiting, has modified the French Intellectual Property Code, in order to enable improved damages for copyright holders as well as harmonising the provisions applicable to various other intellectual property rights.

Trademarks

With regard to the trademark in question, registered in the United States on July 3, 2007, then filed in France, May 10, 2013 covering in particular the products of class 18: covering leather and imitations goods described as: "consisting of an ornamental pocket comprising a zipper, a strap and a second lower part lined with two rivets, and two pieces at the right and left ends."

On appeal, the company Balenciaga made complaint to the judgment undertaken to have ordered the cancellation of the trademark (as shown below) for lack of inherent distinctive character and lack of acquired distinctiveness through use. Arguing instead that the sign, “which represents the front of one of its bag models, had acquired a distinctive character through use in that it constituted a break with the trends in leather goods.”

As per Article L711-2 of the French Intellectual Property Code: “a mark is valid only if it is distinctive, which implies that it is arbitrary and that it fulfils the function of guarantee of origin.”

In particular, (as per the court documents) the company Leslycuir argued that the components of this sign were: "commonplace and have been used on many models of bags for several years for practical and aesthetic purpose in the fashion industry."

The court made a point of noting - that it did not seek to make a view on the 'originality' of the elements of this sign which may be found identically in any of the parts produced by the company Leslycuir, but instead: “seeks to determine whether the sign adopted to effectively constitute a mark…fulfils the function of a guarantee of origin.”

Acquired distinctiveness through use

Balenciaga argued that the bag contained elements that constituted a break with the trends in leather goods, according to the courts: “without showing that the alleged breach results only from the elements it has taken to create its mark and not from their combination with the other characteristics of the bag.” The courts took the view that Balenciaga’s purported:  “strong commercial success of elements of the trademark sign in question that appeared on [it’s] first bag [called motorcycle'] and then later across other marketed bags...under a line called 'classics' does not show that...these distinctive elements of this line...[had been] adopted [only] to identify the bags it [had] marketed since then.”

[Thus, in a similar view to what was given in judgement in the Louis Vuitton case here] The courts held that: “the sign in question constituted an essentially decorative element which results moreover from the very description of the mark which mentions an ornamental pocket.”

It continued adding: “a number of elements of this sign such as the closure and the strap are functional elements, others like rivets are common in leather goods." Going on to observe that: "the sign in question had no verbal element, no logo, no particular monogram, allowing an identification of the company Balenciaga and its products.”

(Note: A figurative mark generally consists of a combination of verbal and figurative elements. It is a trademark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements.)

Turning to distinctive character of a mark through use, the courts held: “presupposes that the sign has been used as a mark, whereas in the present case…it appears that the sign, because of its purely functional and decorative nature, has never fulfilled its trademark function since the average consumer is not inclined to recognise Balenciaga's products on the sole ground that this sign has been used as a decorative element” - and for these reasons the courts upheld the cancellation of the Parisian brand Balenciaga’s trademark.

Thoughts

The case highlights the difficulties that fashion companies might have when seeking to protect their fashion creations using the law of trademarks. This is especially the case in places other than France, where fashion houses creations are not able to benefit from copyright protection.

Although the Brands figurative trademark has been cancelled in France, Balenciaga still holds its trademark in the states. The Paris fashion house, Balenciaga sued Steven Madden Ltd, back in 2014 accusing the footwear and accessories maker of trademark violations for copying the styling of its best-known handbag, known as a “motorcycle bag.” The case settled out of court for an undisclosed sum.

Current Court of Appeal case: BALENCIAGA c / THE COMPANY LESLYCUIR, SARL

Thanks to Marie-Andrée Weiss for bringing this case to our attention.