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E & J Gallo winery is the owner of the European Union trademark Gallo for alcoholic beverages in class 33, registered in 1996.

This trademark was the subject of a claim of seniority of a French trademark of 1968.

The claim of seniority is an act enabling the owner of an EU trade mark to retain anteriority ? in national countries, while having the possibility not to renew the said national trade marks on their expiry date.

The Gallo winery company considering that the company Champagne Gallo was infringing its rights by using the Gallo sign, assigned  for infringement.

Reconventionaly, Champagne Gallo applied for the invalidity of the EU trade mark and the revocation for non use of the French trade mark

On 6 October 2016, the Commercial Chamber of the Court of Cassation retained:

That Gallo Winery is the owner of an EU trademark, whose seniority has been claimed, namely the French trademark not renewed at expiry in 1998, and not used since its registration in 1968.

That Champagne Gallo has been using the name Gallo as its corporate name and to market champagne since 1984,

That the French trademark claimed as seniority, continued to produce effects only as long as it was still in force.

That having ceased to be so (trademark not renewed at its expiry date + not used), the subsequent use of this trademark by Gallo winery no longer benefited the French trademark but only the EU trademark subsequent to the acts of use of the Gallo champagnes !

 

Finding himself at the receiving end of the stone throwing, GALLO winery loses its French trademark for non-use and, its EU trademark due to previous rights of use of Champagne Gallo!

Lessons learned from this decision:

– On the one hand, it is not necessary to claim seniority of a national trademark that is not exploited and can be revoked (because as a risk of retroactive revocation, this results in loss of seniority)

– On the other hand, it is necessary to monitor one’s trademark and avoid third parties slipping between the rights (here Gallo would have had to see the registration of Champagne Gallo, exploit its French trademark at least for the purposes of the case and then act)

– Finally, we must carefully choose the right moment to start hostilities!

Morality the devil often hides himself in the details and, when it comes to brand use, everything is often a question of detail!

 

Céline BAILLET European Trademark Attorney-INLEX IP EXPERTISE

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