Litigation in series for a large family catering group
28 July 2020French family catering group founded in the 1950s
Victim of its success: recurring copy of the brand in the name of the establishment and its catering concept with a unique formula
Serial litigation aimed at enforcing the monopoly on the client’s trademark and complementary use of unfair competition tools for the protection of the concept and slogan
Key figures
Since 2006 :
- 3 out of 3 successful INPI oppositions > rejection of the copier’s trademark application before registration
- Obtaining a European trademark for the client despite initial EUIPO objection
- 9 amicable agreements
- 11 positive sentencing decisions in 11 cases initiated in summary proceedings or on the merits > prohibition obtained and compensation for damages and legal costs
Strategy
A well-established method ranging from the detection of counterfeiting to obtaining an agreement or a conviction and its enforcement, in collaboration with Trademark Department which manages protection and trademarks watches:
– Monitoring of trademark registrations, domain names, RCS (company names, trade names, brands) + Internet press monitoring
- Rapid reaction as soon as the disputed establishment is opened or as soon as a trade mark is filed.
– Re-use of documents (e.g. skeleton of letters of formal notice) to be adapted in each new case
- Time saving for the client and costs pooling for several cases
– Systematic escalation process: formal notice n°1, reminder, summary proceedings, followed by a settlement proposal, court decision in the absence of a settlement.
- Very regular transactions obtained thanks to the position of force
- Preferred transactions systematically save time and the cost of global litigation
- Transactions if possible non-confidential for reuse on file
– Use of adapted execution methods via a bailiff, targeted on the strategic assets of the dishonest copier (seizure of licence IV for a restaurant)
- Obtaining modification of the sign and payment of convictions
- Action completed with social networks and restaurant referencing
- Means of reducing the visibility of the adversary to consumers
– Reinforcement of the file with the creation of a notoriety study (press book) reused in each case to prove the reputation of the trademark.
Achievements
Constitution of a thick file of convictions that reinforces the conviction of magistrates in the following cases.
We managed to protect a restoration concept and a commercial expression/slogan of the client through unfair competition as an intangible asset of the client, without registering a trademark, thanks to systematic reaction against the risk of confusion between the client and the indelicate third party.
