Paris Court of Appeal, No. 12-17.899 | Rory Wheeler, avocat (Paris) & solicitor (England)

Paris Court of Appeal -1st Pole - 5th Chamber- 11 December 2012, No. 12-17.899

FORD MODELS INC. (ÉTATS-UNIS)

Vs.

P (JEAN-MICHEL)

FORD MODELS EUROPE SA

The American company FORD MODELS INC, a modeling agency founded in 1946, is the owner of:

of the French word mark “FORD MODELS, INC.” filed on 30 March 1992, registered under number 92 412710 and regularly renewed on 27 December 2001 to designate in classes 35 and 41, the services of “agency for models and mannequins, management of individual careers of models and mannequins”,
the Community word mark ‘FORD MODELS’ filed on 10 July 2006 and registered on 21 November 2007 under number 005188412, to designate inter alia in class 35 “talent management services, commercial talent management”.

In the course of 1994, FORD MODELS INC explains that it approached Mr. Jean-Michel P, who operated his own model agency in France, in order to envisage the conditions of a collaboration with the latter and thus signed on 17 November 1994 a protocol intended to create a joint company in France, called FORD MODELS EUROPE.

FORD MODELS INC points out that Article 8 of the protocol provided that it would grant the future company FORD MODELS EUROPE a license “relating to the FORD trademark”, which in its view was indeed granted although it was never formally concluded. By letter dated 22 December 2008, it terminated the protocol and put an end to the license, which had been concluded for an indefinite period, with a notice period expiring on 31 December 2009.

Claiming that FORD MODELS EUROPE nevertheless continued to use the terms “FORD” and “FORD MODELS EUROPE” after that date, and after having had an infringement seizure carried out on 11 January 2010 at its premises and a report drawn up on the same day on the website accessible at www.fordmodelseurope.com, FORD MODELS INC. a, according to a bailiff’s act dated 10 February 2010, had FORD MODELS EUROPE and Mr. Jean-Michel P summoned before the PARIS Regional Court for trademark infringement in order to obtain, in addition to a prohibition measure under penalty, the transfer of the domain name “fordmodelseurope.com” and the payment of damages as well as compensation under Article 700 of the Code of Civil Procedure, all with the benefit of provisional enforcement.

By order dated 4 February 2011, the Pre-Trial Judge declared inadmissible the ground of lack of jurisdiction raised by FORD MODELS EUROPE and Mr. Jean-Michel P, as well as the request made by the latter that “FORD MODELSINC’s request against Mr. Jean-Michel P be declared inadmissible”.

Concurrently, FORD MODELS INC. filed an application for summary proceedings against FORD MODELS EUROPE and Mr. P in order to obtain a preliminary injunction against them.

By order dated 23 March 2010, the judge in charge of the summary proceedings dismissed this request due to the existence of serious disputes.

On 14 December 2011, FORD MODELS EUROPE and Mr. P initiated arbitration proceedings on the basis of the arbitration clause of the aforementioned protocol.

The Arbitral Tribunal was constituted on 30 January 2012 and the Terms of Reference were signed by the parties on 15 March 2012. By decision of 13 July 2012, the Arbitral Tribunal declared that it had no jurisdiction. This award was notified to Mr. P and FORD MODELS EUROPE on 12 and 18 September 2012.

By judgment of 7 September 2012, the High Court of PARIS suspended its decision until the final outcome of the arbitration proceedings initiated by FORD MODELS EUROPE and Mr P on 14 December 2011, ordered the case to be struck off the register, but said that it could be reinstated by the most diligent party once the cause for the suspension had disappeared, said that there would be no need to apply Article 700 of the Code of Civil Procedure and reserved the costs.

By a deed dated 5 October 2012, FORD MODELS INC. has notified a writ to FORD MODELS EUROPE and M. Jean-Michel P before the delegate of the First President of the PARIS Court of Appeal, seeking leave to appeal the 7 September 2012 ruling, claiming the existence of a serious and legitimate reason, as the arbitral award could only be subject to an appeal for annulment on the limited grounds provided for in Article 1520 of the Code of Civil Procedure, this appeal not being suspensive.

It states that even if the arbitral award were to be set aside, the proceedings that gave rise to the award under which the High Court decided to suspend the proceedings have definitively come to an end and that, at most, new arbitration proceedings could be initiated.

By submissions dated 19 November 2012, FORD MODELS INC. withdrew its application. By submissions of the same day, developed at the hearing, FORD MODELS EUROPE and Mr. Jean-Michel P requested that FORD MODELS INC be ordered to pay EUR 3,000 on the basis of Article 700 of the Code of Civil Procedure.

UPON WHICH,

Whereas the application for leave to appeal against a decision to stay proceedings is subject to an oral procedure;

Whereas the submissions of withdrawal of FORD MODELS INC. occurred on the same day as the submissions in defense developed by FORD MODELS EUROPE and Mr. Jean-Michel P, on 19 November 2012;

Whereas, in view of the concomitance of the claims, it can only be noted that the withdrawal of the claim is perfect and that the statement of defense submitted by FORD MODELS EUROPE and Mr. Jean-Michel P. is inadmissible;

Whereas the withdrawal of FORD MODELS INC. implies submission to the payment of the costs of the extinguished proceedings;

FOR THESE REASONS

We note the perfect nature of the withdrawal of FORD MODELS INC. on 19 November 2012;

DECLARES INADMISSIBLE the applications submitted by the company FORD MODELS EUROPE and Mr Jean-Michel P ;

Let the costs be borne by FORD MODELS INC.

ORDER issued by being made available at the Court Registry, the parties having been notified in advance under the conditions provided for in the second paragraph of Article 450 of the Code of Civil Procedure.