Litigation in series for a large family catering group28 July 2020
French 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
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
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.
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.