Protecting fictional characters under intellectual property law is crucial given the economic and cultural value they can acquire. An example of this is the trademark “Pierre Cadault”, which monopolizes the name of the main character in Emily in Paris and was contested on the grounds of bad faith.
Cancellation decision No. C 64 100 by the European Union Intellectual Property Office (EUIPO) is an example of how trademarks can be contested due to being registered in bad faith. In this case, the contested trademark “Pierre Cadault” reproduced the name of the fictional character in the series Emily in Paris (produced by Viacom and distributed by Netflix), which had been registered by a third party who had nothing to do with the series or its producers. This article deals with the main points of the decision and the reasons that led to the trademark being declared invalid.
- Background of the case: The series Emily in Paris and the character Pierre Cadault
The series Emily in Paris has been a global success: it premiered in Europe on October 2, 2020, was renewed by Netflix for a second season in November 2020 and then for a third and fourth season in January 2022. One of the main characters is Pierre Cadault, a haute couture fashion designer who has become one of the icons of the series.
Taking advantage of the hype around the series, a third party registered the character’s name as a trademark on March 31, 2023, over two years after the series had premiered.
Viacom, the producer of Emily in Paris, requested a declaration of invalidity of the trademark on the grounds of bad faith, arguing that the character was well-known throughout the EU because of the series.
- Main arguments
Viacom argued that the contested trademark was identical to the name of the character Pierre Cadault and sought to take advantage of the character’s reputation.
Viacom submitted a huge amount of evidence to support its claim regarding the reputation of the series and evidence that the character was well-known before the filing date of the contested trademark due to its link to the series. The evidence included viewer numbers, social media posts, press articles and TV programs mentioning the series.
The registered trademark covered fashion-related goods such as cosmetics, sunglasses, jewelry, leather articles, clothing, which are goods commonly used in the merchandising of popular series such as Emily in Paris. Viacom argued that the goods were used in the market on merchandising for young people: the main target of the series.
The risk was that the public would mistakenly believe that the goods marketed under the “Pierre Cadault” trademark emanated from Viacom.
- Bad faith in filing the application
The concept of bad faith is crucial in this case. European case law establishes that an application may be considered to have been filed in bad faith if the applicant intended to block a competitor or to take unfair advantage of the reputation of a third party. To determine that a mark has been filed in bad faith it is not only necessary for the applicant to be aware that the name is in use, but also to analyze the applicant’s intentions. In this case, the proprietor of the trademark did not submit observations to justify a legitimate intention to register the name “Pierre Cadault”, which reinforces the idea that the application was filed in bad faith.
The fact that the signs were identical – the name “Pierre Cadault” – and that the goods marketed under the trademark were related to fashion, was sufficient for EUIPO’s Cancellation Division to conclude that the owner of the mark must have known of the fictional character and that it filed the application in bad faith to take unfair advantage of the character and the series.
EUIPO’s Cancellation Division quoted the famous Tony Montana precedent, which had concluded that a trademark that reproduced the name of a famous character was acting in bad faith if it did not intend to use the mark lawfully, but rather to stop others from doing so or take advantage of the fame of the name in question. In the same manner, the application for the mark “Pierre Cadault” was considered an unfair attempt to appropriate the name of the fictional character.
- Impact and conclusions of the case
Invalidity Decision C 64 100 is a clear example of how a mark can be challenged when it is proven that the applicant acted in bad faith, seeking to take advantage of a fictional character in an extremely popular TV series. These practices, which seek to take advantage of a third party’s reputation or cause confusion among consumers, are prohibited under European legislation, especially when they occur with respect to well-known characters or products with an established presence in the market.
In this case it is also clear how important it is to obtain intellectual property protection in the area of television and other entertainment products, in which fictional characters and creative elements have a high economic value, especially in the world of merchandising. Companies need to guard against these attempts at misappropriation and defend their rights in order to protect their trademarks and products.
In short, the invalidity of the trademark “Pierre Cadault” highlights the importance of registering a trademark lawfully. Applications that seek to free ride on the reputation of a third party without consent may be canceled on the grounds of bad faith. Protecting copyright and trademarks in the area of fiction is crucial in order to ensure a fair and competitive market in which artistic and commercial creations can grow without the risk of being unfairly exploited.
Esther Pedreño Pérez
