Cartier has prevailed in a French legal fight centering on some of its most famous jewelry designs. In a decision issued last month, the Marseille First Instance Court sided with the Richemont-owned jewelry company, finding that a group of defendants are on the hook for selling counterfeit or otherwise infringing Cartier designs. In addition to its infringement-focused findings, the court shed light on the protectability of Cartier’s “LOVE” and “JUSTE UN CLOU” designs, shooting down the defendants’ arguments in response to the lawsuit that the designs in these collections are ineligible for both copyright and trademark protections.
A Bit of Background: Cartier filed suit against Mr. P. F.-C. (trading as Azur et Soleil), S.A.S. S.A.G., which operates St. Tropez-based boutique Plage Vendôme by Nikki D’Oggi, and counterfeit supplier E.U.R.L. Kristal (the “defendants”) in 2023, accusing them of claims of trademark infringement, copyright infringement, and parasitic competition in connection with their making, marketing, and/or selling of counterfeit or otherwise infringing versions of its coveted “LOVE” and “JUSTE UN CLOU” designs.
In response to Cartier’s case, the defendants challenged its rights in the designs, arguing that the LOVE and JUSTE UN CLOU designs lack the sufficient originality to enjoy copyright protection. At the same time, the defendants asserted that Cartier’s trademark for a flat screw head (which appears on the various LOVE collection items) lacks distinctiveness (and its registration should be invalidated), as screw heads are a common design element for both jewelry and watches, and that the motif is inseparable from the overall aesthetic of the products, making it a functional element rather than an indicator of source.
Cartier’s Copyright, Trademark Rights
Siding broadly with Cartier, the district-level court held that the defendants are liable for copyright and trademark infringement, as well as parasitic competition, as a result of their sale of copycat Cartier jewelry. In addition to injunctive relief that bars the defendants from further infringing Cartier’s rights and requires them to destroy all infringing products, the court ordered the defendants to pay approximately €100,000 in damages.
Cartier’s Copyrights: Turning first to Cartier’s copyrights, the court confirmed that its LOVE and JUSTE UN CLOU collections are sufficiently original to qualify for protection under Article L.111-1 of the French Intellectual Property Code. Specifically, the court found that the unique combination of features in the LOVE bracelet design (including the oval shape of the bracelet, the flat, smooth bangle adorned with evenly spaced screw-head motifs, etc.), and the JUSTE UN CLOU bracelet (namely, the tubular shape mimicking a bent nail and the decorative elements like the pointed end and “head of the nail” with engraved grooves) warrant copyright protection.
The defendants characterized the individual elements of the LOVE and JUSTE UN CLOU designs as ineligible for protection. For instance, they maintained that the screw motifs that appear on the LOVE bracelet have been used in Cartier’s own Santos watch collection, which is now in the public domain. They also argued that the use of an “everyday object, such as a nail,” for the JUSTE UN CLOU collection lacks originality. To back up this claim, the defendants referenced similar designs by other luxury brands, like Hermès’ “Clou de Forge” ring.
Unpersuaded, the court held that the originality lies in the unique combination of elements of these designs, not the individual components, and that the nail bracelet, in particular, is the result of “an assertive aesthetic bias, characteristic of the style and spirit of CARTIER creations and undoubtedly reflects the aesthetic and arbitrary choices of arrangement and layout of this bracelet, giving [rise to] the right to copyright protection.” In furtherance of its copyright decision, the court also noted that the originality of these designs has previously been recognized by other French courts.
Cartier’s “Screw Head” Trademark: As for the validity of Cartier’s “screw head” trademark, the court found that despite the defendants’ claims to the contrary, the mark is, in fact, distinctive. The motif “only serves a decorative and non-functional purpose since it fulfills no screwing function,” the court held. It further asserted that the mark “is intrinsically able to perform the function of guarantee of origin devolved to the brand and must, therefore, be recognized as valid.”
In siding with Cartier, the court highlighted the company’s “continuous and systematic use of this screw head as a distinctive sign of its products with the public, which recognizes thanks to it the origin of the products on which it is reproduced and allows it to distinguish them from those marketed by competitors of the CARTIER companies.” The court also cited an array of evidence of Cartier’s “substantial advertising and promotional investments” in the screw design.
Parasitism: Finally, the defendants also sought to escape Cartier’s parasitic competition claim, arguing that the simple act of producing similar jewelry at a lower price (the infringing jewelry sold for €30 and €49) does not constitute parasitic competition, particularly when the designs lack originality or are inspired by elements in the public domain. They also argued that their products did not create confusion or deceive consumers into associating the goods with Cartier.
Again, the court sided with Cartier here, finding that the defendants were clearly looking to trade on the reputation of Cartier and the demand for its offerings. This was demonstrated by “distinct acts of parasitism to the detriment of Cartier,” the court stating, specifically noting that the defendants created “a range effect” by offering up an array of different Cartier designs in different materials (gold, rose gold, white gold, etc.). This “effect of range” (or product line consistency) was “not coincidental but a calculated effort to mimic Cartier’s offerings and attract customers who valued the brand’s exclusivity,” the court held.
It is worth noting that parasitism does not require a risk (or showing) of consumer confusion, making it a versatile tool for brands looking to combat unfair market practices beyond traditional trademark claims.
The case is Cartier v. E.U.R.L. Kristal, Azur et Soleil, and S.A.G. (Plage Vendôme), 23/09826.
Share
