9

The General Court summarised the facts giving rise to the dispute as follows: ‘1 ... [Mr Szajner] is the proprietor of the [EU] word mark LAGUIOLE, which was applied for on 20 November 2001 and registered on 17 January 2005 by [EUIPO] under Regulation [No 40/94, codified by Regulation No 207/2009]. 2 ... The goods and services in respect of which the trade mark LAGUIOLE is registered are in, inter alia, Classes 8, 14, 16, 18, 20, 21, 28, 34 and 38 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended … … 3 On 22 July 2005, … Forge de Laguiole SARL filed an application for a declaration of partial invalidity in respect of the trade mark LAGUIOLE under Article 52(1)(c) of Regulation No 40/94, in conjunction with Article 8(4) of that regulation (now Articles 53(1)(c) and 8(4) of Regulation No 207/2009). 4 The application for a declaration of invalidity was based on the business name Forge de Laguiole, which was used by [that company] for the “manufacture and sale of all cutlery articles, scissors, gift articles and souvenirs — all tableware-related articles”. According to [Forge de Laguiole SARL], this business name — which is of more than mere local significance — entitles it under French law to prohibit the use of a subsequent trade mark. 5 The application for a declaration of partial invalidity was directed against all of the goods and services referred to in paragraph 2 above. 6 By decision of 27 November 2006, the Cancellation Division [of EUIPO] rejected the application for a declaration of invalidity. 7 On 25 January 2007 [Forge de Laguiole SARL] filed a notice of appeal with [EUIPO], under Articles 57 to 62 of Regulation No 40/94 (now Articles 58 to 64 of Regulation No 207/2009), against the Cancellation Division’s decision. 8 By [the decision at issue], the First Board of Appeal of [EUIPO] upheld the appeal in part and declared that the trade mark LAGUIOLE was invalid for the goods in Classes 8, 14, 16, 18, 20, 21, 28 and 34. It dismissed the appeal as regards the services in Class 38. 9 In particular, the Board of Appeal took the view that, under French case-law, the protection enjoyed by a business name extended, as a matter of principle, to all of the business activities covered by the objects of the company, but that in cases where those objects were vague or the activities pursued were not covered by them, the protection was limited to the activities actually and specifically pursued. In the present case, the objects of [Forge de Laguiole SARL] were sufficiently clear as regards the “manufacture and sale of all cutlery articles, scissors”. The Board of Appeal also stated that, even if it were to be conceded that the wording of the objects of the company (“manufacture and sale of all gift articles and souvenirs — all tableware-related articles”) was vague, the business name of [Forge de Laguiole SARL] deserved protection, at least in the sectors in which it had actually pursued its business activities prior to the filing of the application for registration of the trade mark LAGUIOLE. 10 The Board of Appeal considered, in this regard, that [Forge de Laguiole SARL] had demonstrated that it had carried on a business activity, prior to the filing of the application for registration of the trade mark LAGUIOLE, involving the trade in goods coming under “tableware”, “homeware”, the wine sphere, scissors and articles for smokers, golfers, hunters and for leisure, as well as other accessories. By contrast, [Forge de Laguiole SARL] had failed to demonstrate that it had carried on a business activity in respect of luxury goods and travel articles, which, moreover, were not covered by its objects. Lastly, the Board of Appeal considered that, except for telecommunication services in Class 38, all of the goods covered by that trade mark encroached upon [Forge de Laguiole SARL’s] business sectors or were situated in related business sectors. …’