Case references – Paris Judicial Court, 3^rd chamber, 2^nd section, March 18^th, 2022, n. 20/03727 ; Paris Court of Appeal, 5^th division, 1^st chamber, June 5^th 2024, n. 22/06786

In 2020, two luxury house claimants initiated proceedings against TISM – a French watchmaker, better known for its “Augarde” brand – as well as the company’s president.  The proceedings were before the Paris Court of first instance on grounds of trade mark infringement and free-riding. 

The claimants sought an interim injunction restraining TISM from marketing and promoting its watches.  The claimants’ key arguments were that numerous variations of TISM’s watch collection reproduced characteristics of the claimants’ watches and infringed their French and EU semi-figurative trade marks representing the dial of a watch. Further, the claimants argued that TISM’s activities amounted to free riding, insofar as TISM’s watches incorporated characteristics of the claimants’ watch models.

Notably, before initiating proceedings, the claimants had undertaken online notice and takedown procedures resulting in the removal of TISM’s Instagram account and numerous Facebook publications featuring the allegedly infringing watch products. 

In their counterclaim, the defendants argued that the closure of the Instagram account @augarde_watches, and the suppression of the Facebook publications promoting the watches in dispute, carried out at the request of the claimants as part of the notification and takedown procedures made available by these platforms, had caused them significant damage. The defendants claimed that the nature of digital communication through online social media was essential to their business.  This was especially as the deletion of the account and online publications took place during the COVID-19 health crisis and lockdown when it was not possible to make physical sales in stores. Accordingly, TISM sought a sum of 25,000 euros in damages on the basis of articles 1240 and 1241 of the French Civil Code (tort liability based on fault). 

In their defence, the luxury houses denied any wrongdoing, claiming that the procedure for notification and taking down any allegedly illicit content provided by Instagram and Facebook was left to the discretion of the platforms. Although a claimant can initiate these procedures with digital platforms, the platform providers independently assess the merits of each takedown request.

THE FIRST AND SECOND INSTANCE DECISIONS BY THE PARISIAN COURTS

The pre-trial judge dismissed the claimants’ requests for an interim injunction against the marketing and promotion of the Augarde watches that were the subject of litigation. Similarly, once the case was heard on the merits in 2022, the Paris Court of First Instance cancelled the trade marks that the claimants invoked for lack of distinctiveness.   As a result, the Court dismissed the claims for design and trademark infringement and the claims of free riding. Importantly, the Paris Court of first instance approved the defendants’ counterclaim for damages, ordering the claimants to pay TISM a sum of 5,000 euros. 

The luxury houses subsequently filed an appeal requesting the Court of Appeal to overturn the first instance judgement.

The Paris Court of Appeal upheld the lower instance judgement on almost all counts, including the order to pay 5,000 euros in damages to TISM. In doing so, the Court approved the first instance Court’s reasoning that the choice to request the closure of TISM’s Instagram account and the deletion of Facebook publications, in anticipation of a court decision, was solely at the claimants’/appellants’ own risk.  In dismissing the claimants’/appellants’ infringement and free-riding claims, the judges held that the notice and takedown actions were wrongful and had caused damage to TISM, who was deprived of online visibility. 

REMARKS

To the best of the author’s knowledge, this is the first time a French court of appeal has recognised a party’s prejudice – and therefore, has granted damages - resulting from a take down procedure initiated by a rightsholder when the trade mark being sued on is revoked in subsequent court proceedings. 

This decision is a reminder to rightsholders to exercise caution when implementing take downs and consider its impact on potential litigation.