French Patent Office - Worldwide Pants Incorporated v/Monsieur Mustapha E.

Decision date

2017-01-27

Decision No.

OPP16-3615/BES

Nature

Trademarks

Jurisdiction

French Patent Office

Parties

Worldwide Pants Incorporated c/ Monsieur Mustapha E.

The US company Worldwide Pants Incorporated was represented by Karina Dimidjian-Lecomte, attorney at law, assisted by Klervi Henry, attorney at law.

Issue :

  • - Recognition of a well-known mark within the meaning of Article 6bis of the Paris Convention;
  • - Evidencing the reputation of this non-registered trademark.

Worldwide Pants opposed the French trademark application for LATE SHOW filed by Mr. Mustapha to designate television services. It was the first opposition in France based on this well-known unregistered trademark.

Whereas the so-called LATE SHOW television show is one of the most popular American shows, Worldwide Pants did not own any registered trademark rights on this sign in France or in the European Union.

It was therefore necessary to establish the well-known character of this sign in France within the meaning of Article 6 bis of the Paris Convention and to provide evidence in this respect when filing the opposition, which was the main issue of this case.

In the light of the extensive evidence filed in support of the well-known character of the earlier mark as well as the arguments developed in this respect by Casalonga, the INPI acknowledged the status of the unregistered prior mark LATE SHOW as a well-known mark within the meaning of Article 6bis of the Paris Convention and rejected the contested application entirely.


Worldwide Pants Incorporated v/Monsieur Mustapha E. - Late Show

27 January 2017
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