The example of the TOGO sofa highlights the need for vigilance
In its ruling of 25 April 2024, Paris Court upheld the infringement of a Togo armchair sold second-hand on a dedicated website, on the grounds that it had undergone substantial modifications.
At a time of growing awareness of ecological issues and rise of second-hand sales, this decision is likely to be one in a line of actions brought by luxury brands against the resale of vintage products that have been altered for the purposes of refurbishment.
Facts of the case were the following – in substance:
Ligne Roset enjoys a strong reputation in the field of furniture. Its flagship products include the TOGO range of armchairs and sofas.
As their design protection had expired, the company – as part of its strategy to protect its assets – filed a three-dimensional European Union trademark registered under no. 16691537 for its sofa and the ‘ligne roset’ trademark, i.e.:
In addition to its trademark rights made of the image of this sofa, Ligne Roset benefits from the protection afforded to copyright by virtue of the original design of this piece of furniture.
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Ligne Roset has been aware of the sale, on a dedicated platform, of vintage TOGO sofas which had been the subject of prior ‘refurbishment’ operations.
Considering that these third-party interventions had modified its sofa and did not respect the initial configuration of its creation, including its quality standards, Ligne Roset sued the platform on the grounds of copyright infringement and trademark infringement.
In its defence, the platform raised several arguments seeking to deny Ligne Roset the right to bring an action.
Among them,
The platform argued that Ligne Roset had exhausted its rights to bring proceedings since it had put the litigious sofa on the market in the European Economic Area (EEA).
Exhaustion of rights is a legal concept that limits the monopoly conferred by intellectual property assets. In practical terms, the aim of this principle is to prevent the holder of a right from reintroducing territorial barriers through the exercise of its exclusive right. It thus makes it possible to reconcile the territoriality of intellectual property rights – in this case trademarks and copyright – with the free movement of goods and services within the EEA.
In practice, principle of exhaustion of rights means that infringement cannot be deemed to have occurred once the product has been placed on the EEA market for the first time by the holder of the attached trademark rights, or at least with his consent.
Principle of exhaustion of rights is defeated when the holder of the rights concerned demonstrates legitimate grounds for opposing the subsequent marketing of his products.
These legitimate grounds include cases where genuine products have been altered after they were first placed on the market.
Primary purpose of the trademark is to guarantee to the consumer the origin of the product.
Ligne Roset argued that the marketing of the TOGO armchair in an altered form necessarily misled the consumer as to its origin.
In fact, both the cover of the contested sofa and the foam constituting the interior of the latter – characteristic elements of the TOGO – had been substantially modified, which altered its line and prejudiced the intrinsic quality of the TOGO, and a fortiori its brand image.
The Court followed Ligne Roset’s reasoning and arguments.
It considered, in this case, that the alterations being substantial, the legitimate reason for the exception to the principle of exhaustion of rights invoked by Ligne Roset was demonstrated.
It therefore held, in light of the alterations made, that this ‘second hand’ version of the furniture constituted an infringement of Ligne Roset’s rights in its three-dimensional trademark.
While the Court recognised the originality of the TOGO armchair, it rejected the infringement of copyright attached to the TOGO, considering that the alterations made to the products did not affect its visual appearance but only its internal structure, which is invisible. Copyright protects the form and external visual appearance of a work.
This decision provides an opportunity to raise awareness among retailers of refurbished second-hand products, particularly in the luxury sector, of the need to carry out high-quality refurbishments on resold products, using noble materials and respecting manufacturing know-how.
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Delphine Brunet-Stoclet
Marie André-Nivet
Léna Tordjman
Félix Bertrand
