Does including a fictitious date create a deceptive trademark?

Should the use of a fictitious date within a brand name constitute a deceptive trademark? This is the question that the Court of Justice of the European Union will have to consider, following a referral by the French Court of Cassation in the ongoing ‘Fauré Le Page’ case, as Rose-Marie Ehanno uncovers. 

Reminding consumers of a brand's long history is a proven marketing method, with consumers often perceiving seniority as proof of superior know-how and quality. Celebrating anniversaries and communicating establishment dates has been shown to positively influence buying decisions and even enable companies to raise the prices of the goods or services offered.  

But what if a company wants to include a date of establishment within its brand name? Are there any conditions that apply for such signs to be registered as trademarks? And, what happens if a brand owner seeks to register a trademark with a fictitious date? Would such a registration constitute a ‘deceptive trademark’? These are the questions raised in the recent ‘Fauré Le Page’ case. 

Background to the deceptive trademark challenge 

Parisian company ‘Maison Fauré Le Page’ was set up in 1716, opening its first shop in 1717 and offering weapons, ammunition and leather accessories for sale until its dissolution in 1992. In 2009, a new company 'Fauré Le Page Paris’ was born, unrelated to its 18th century namesake, offering luxury leather goods.  

In 2011, this new company filed two French trademark applications for ‘Fauré Le Page Paris 1717’ to designate a variety of leather goods, with both marks (3839809 and 3839811) passing successfully to registration.  

In 2012, competitor Goyard St-Honoré sought the cancellation of the trademarks on the basis that they were misleading. The company argued that by adding the year ‘1717’ to the brand name, Fauré Le Page Paris was presenting itself as the successor to the older company and thereby claiming, in the mind of the consumer, centuries-old heritage and knowledge that it did not possess. 

From the French courts to the CJEU 

This case has had many twists and turns, with the Court of Cassation originally agreeing with Goyard St-Honoré that a trademark can be considered deceptive not only as it relates to the qualities of the products or services, but also the characteristics of the owner company – and, even more so, in the case of luxury products. 

On appeal, however, the applicant challenged the French Court for basing its deceptive trademark decision on the qualities of the owner (as opposed to the qualities of the designated goods or services). In particular, it cited a similar deceptive trademark action considered by the EUIPO Cancellation Division on 27 November 2019 (No. 19646), which had led to the application for cancellation being rejected. 

As a result, the Court of Cassation referred to the Court of Justice of the EU (CJEU) for clarification on the interpretation of Directive 2008/95/EC of 22 October 2008 in the context of deceptive trademarks. The decision is expected in the coming months and will be closely followed by IP professionals, given its potential consequences on the registration of similar trademarks in future. 

To find out more about trademark registration best practices, including deceptive trademark questions, speak to your Novagraaf attorney or contact us below. 

Rose-Marie Ehanno is an IP Lawyer based at Novagraaf in France.