Games Workshop or illustration of the risks of violation of the rules of consumer protection

Note: The examples given below about Games Workshop (GW) are intended as illustrations of the legal risks incurred by commercial practices on the edge of legality.

I planned to write for some time an article on the law of consumption by illustrating some examples from our daily life.

The purpose of consumer law is to rebalance professional-consumer legal relations in favor of the latter under two angles of attack:

  • the information of the consumer before the conclusion of the contract on the price and the nature of the product
  • consumer protection at the time of its conclusion or during its execution

A debate on the Tric-Trac site, about the English company Games Workshop (GW), publisher of Warhammer miniatures games, and especially about its famous "codex" for its staff (excerpts from the magazine Backstab No. 10 of July / August 1998) allows me to address some interesting legal points.

A first point concerns the selling price of the product. Article L. 133-3 of the French Consumer Code states that "any product seller or service provider shall, by means of marking, labeling, display or any other appropriate method, inform the consumer of the prices … "

A difficulty arises as to whether it is indeed on the product itself that the price must be indicated or not. Some already see where I am coming from. Indeed, before the entry into force of the euro in the European Union (except in a few countries including the United Kingdom), the company GW had for practice, in order to facilitate its logistics, she had indicated to the time, not to mention any price on the boxes and blister figurines which included only one alphanumeric code composed of a letter. In order to know what the price of a product was, it was necessary to consult a table of correspondence sometimes difficult to reach in the store.

This practice, which could have disappeared with the appearance of the euro and still continues today, could constitute an infringement of the price legislation, a fifth-class offense, provided for in Article L. 131-13 of the Penal Code. punished by a fine of 1500 euros (per infringement found) at the expense of the manager of the store in question.

A second point concerns the special operations and promotional offers offered in magazines of the type: "two products bought, the third offered if you order before such date or if you come to our store to buy such date or before such date". In this case, the announcement must clearly indicate whether it is limited to certain products or not and especially not to mention "within the limits of available stocks".

Indeed, the company is forbidden to advertise products that would not be available because they are not in stock. The company must be able to provide the products at the proposed price immediately in case of sale in store or within the time limits indicated in case of mail order, except to justify, precisely that the stocks ordered were sufficient, given the expected forecasts of sale.

GW has a slight tendency (and this is a euphemism) to do this kind of special operation. Following an announcement in the magazine White Dwarf, customers are crowding D-Day at their store and have the unpleasant surprise that they will not be able to buy all the desired products due to a lack of inventory.

The sanction of this lack of foresight of the store is the offense of prohibition of misleading advertising, provided for in Articles L.121-1, L. 121-6 paragraph 2 and L. 213-1 of the Consumer Code. The offense has a broad scope since it covers any presentation of information intended to provoke the act of purchase by the consumer, regardless of the advertising medium used, regardless of the element of information (existence, price, nature, quality … of the product in question) whether it is misleading (false) or deceptive (misleading) advertising.

Thus, in the case of products that are not available in stores, it is misleading advertising because of the inexistence of the product in the store's inventory. The manager of the store may, in this case, incur a maximum fine of 37500 euros and imprisonment of two years. The fine can exceed this amount and go up to 50% of the committed advertising budget.

A third point concerns the famous "codex" of the company GW, distributed to its staff, in which one can read advice quite advised in the matter of commercial practice:

  • Stay courteous
  • Maintain a high standard of hygiene and personal appearance
  • Establish rapport with the consumer
  • Spread your knowledge of the company's products …

Humor made in GW (well, we hope it is):

  • If a job deserves to be done, he deserves to die for him
  • GW is a brotherhood. Be proud to be among those chosen but never underestimate the ease with which one can be rejected from Paradise
  • Our goal is to match a customer's needs with a product we offer

But also beautiful "horrors" (to relate to the sentence above): for children in particular, you [sellers] are the equivalent of a god. Use this position productively and success will be within your reach.

The children in question are often between eight and twelve years old and the big problem is that by inciting their employees to adopt such behavior, the company GW leads them straight to commit the offense of fraudulent abuse of the state of ignorance or the situation of weakness, offense punishable under Articles 313-4 and 313-9 of the Penal Code, punishable by a fine of 375,000 euros and three years' imprisonment. Fortunately for employees, they will not be directly concerned because they act in the course of their work and under the subordination of their employer. So again the criminal responsibility of the store manager will be sought. Unlike the other two offenses cited in my article, the criminal liability of society can also be sought.

But do not think that the company GW could be directly condemned in this last hypothesis, that would be too easy. Indeed, if I am not mistaken, the GW stores are franchised companies (most of the time SARL) of the French subsidiary of the English group and therefore legally independent in case of commission of offenses.

Edit (following the modification of the legal structure of the chain): but do not think that the society GW could be easily condemned in this last hypothesis. It is indeed necessary to seek outside the responsibility of the physical person of the store manager that of the legal person of the company, which is always tricky in practice.

Next you will be powerful or miserable …

Edit: To respond to various comments from forums referring to this article, the behaviors of employees of GW stores mentioned above serve as illustrations of certain principles of consumer law that any commercial company dealing with consumers must respect . It has never been a question of making a statement on the present situation of the commercial policy of the chain of stores. So thank you not to say to the article what you want to understand .

The validity of the mark

Let's continue our exploration of trademark law by its conditions of validity. To be valid, a mark must be lawful, distinctive and available. These conditions are appreciated at the time of filing the registration.

1) The mark must be lawful (Article L. 711-3):

  • The sign must not be illegal in the strict sense: it is not possible to use as marks signs referred to in particular by the Paris Convention of 1883 (coats of arms, flags, emblems …), by the international convention of Geneva of 1905 or by the law of October 29, 1975.
  • The brand must not be contrary to public order and morality
  • The mark must not be fraudulent or deceptive, ie the sign used must not mislead the consumer as to the nature, composition, qualities or destination of the product.

If one of these conditions is not fulfilled, the mark is unlawful and is absolutely void, which means that everyone has an interest in demanding the nullity.

2) The mark must be distinctive (Article L. 711-2): the distinctive character of the mark is assessed in relation to the goods or services indicated in the deposit form. Are not considered distinctive:

the necessary or generic marks:   "signs or names which, in everyday or professional language, are exclusively the necessary, generic or usual designation of the product or service" are devoid of any distinctive character. However, in certain sectors of activity, case law accepts the registration of very distinctive marks. Similarly, generic terms translated into foreign languages ​​are only distinctive if they are not trivial and their meaning ignored by many people.

descriptive marks: "signs or names which may be used to designate a characteristic of the product or service, and in particular the species, quality, quantity, destination, value, geographical origin, date of production of the product, good or service provision "are descriptive and therefore prohibited. If the mark turns out to be necessary, generic or descriptive, it will be absolutely void.

3) The mark must be available (Article L. 711-4): the sign chosen as a mark must be free of rights, ie for the intended field of activity, it must not be already object of an earlier right conferred by:

  • an earlier registered or well-known mark
  • a name or business name
  • a commercial name or a sign known throughout the national territory
  • a protected designation of origin
  • Copyright
  • rights resulting from a protected design
  • the personality right of a third party
  • the image or fame of a local authority

4) The principle of specialty: the registration of the chosen sign gives the holder an exclusive right of exploitation for his sector of specialty, that is to say only for the goods and services designated at the time of the deposit. An administrative classification is proposed at the time of filing to designate the goods or services, but it has no legal significance. This principle is essential in trademark law because it makes it possible to assess the availability, the novelty or the distinctiveness of the sign.

Trademark law: the protection of the mark

Note: all the articles of law mentioned below are referenced in the Intellectual Property Code.

Continuation and end of our articles on trademark law. We will have covered the main themes of intellectual property law; copyright, design rights and trademark law.

The owner of a trademark is the one who filed it first. Ownership of a trademark is not acquired by use but by registration (Article L. 713-1). In case of dispute during the filing of a trademark, it is possible to bring an action claiming to obtain the transfer of this filing made fraudulently by a third party (Article L. 712-6).

The application for registration shall be filed by the person concerned or his representative either at the National Institute of Intellectual Property (INPI) or at the Registry of the Commercial Court or the High Court of the applicant's domicile (Article R. 712- 1). This deposit includes the application for registration (identification of the applicant, model of the mark, enumeration of the products and services to which it applies) and additional documents (justification of the payment of royalties, the power of the agent, etc.). The deposit is published in the official bulletin of industrial property (BOPI) (article R. 712-8).

The application is examined both in substance and in form by the INPI, but it does not carry out a prior art search. If the application is accepted, the mark is registered and published in the BOPI, but protection starts on the day the application for registration is filed.

The registration of the mark confers on its owner a monopoly of exploitation of this mark for the goods or services designated as from the filing date, within the national territory and for a period of 10 years renewable indefinitely.

There are exceptions to this principle such as:

  • the use of the sign as a corporate name, trade name or sign if the use is prior to the filing of the mark or if it is a namesake of good faith
  • the use of the sign as a reference necessary to indicate the destination of a product or a service to the customer

The registration of the mark also gives the holder the opportunity to transfer his ownership of the mark, according to various legal processes:

  • the assignment of the mark: the owner of the mark transfers all or part of the property rights he holds on the mark
  • the trademark license: the owner grants a third party the right to exploit the trademark
  • the pledge of the mark

The owner of the mark may finally lose his right of ownership of the mark by:

  • voluntary or tacit renunciation (Article L. 714-2)
  • the deprivation of the mark: for non-serious exploitation for five years (Article L. 714-5) or for a mark that has become generic (the mark has become the usual designation of the product) or misleading (Article L714-6)

To protect his trademark against infringement, the holder may act unfairly (Article 1382 of the Civil Code), or by invoking the offenses of alteration or deletion of mark (Article L. 217-1 of the Consumer Code) or product substitution (Article L. 716-10 b). The holder may also bring an action for infringement (Article L. 716-1).

There are several forms of counterfeiting:

  • counterfeiting by reproduction: it necessarily requires an identity of products or services. If the sign is identical to that of the authentic mark, it is a counterfeit reproduction identical. It is not necessary to prove the risk of confusion. On the other hand, if the sign is similar or if it uses an authentic mark in a set that does not form an indivisible whole (reproduction by addition), it is a counterfeit by partial reproduction. It must then be proven that there is a risk of confusion.
  • counterfeiting by imitation: a protected mark must be imitated for identical or similar products and there is a risk of confusion for the public.
  • counterfeiting by use: when the mark is used for goods or services identical to the original mark, even with the addition of words such as "formula", "way" …, there is infringement without it being necessary to provide proof of the likelihood of confusion. Where the original mark is used for similar goods or services or when the imitated mark is used for identical or similar goods or services, the likelihood of confusion must be proved for the infringement to be used.
  • counterfeiting by affixing a trademark: this is the marketing of a product or service under a trademark to
    which it is not entitled, commonly known as the offense of filling.
  • counterfeit by product substitution: it is knowingly to deliver a product other than the one requested.

Apart from counterfeiting, there are other offenses relating to the mark of others such as the deletion or modification of the mark of others, the maintenance of an authentic mark on products which have been the subject of processing and receiving, selling, offering or supplying goods or services bearing a counterfeit trademark.

Article L. 716-7 provides that the holder of an application for registration, the owner of a registered trademark or the beneficiary of an exclusive right of exploitation may make an infringement seizure. Thus, it can also act in counterfeiting by choosing between the penal way and the civil way.

In the case of civil proceedings, the High Court of the place of commission of the offense or the domicile of the defendant is exclusively competent (Article L. 716-3). Article L. 716-4 also authorizes the use of arbitration. Proof of counterfeiting can be made by any means, but the preferred mode is the counterfeit seizure.

As far as the criminal track is concerned, it is the Criminal Court of the place of commission of the offense which is competent. Counterfeiting is punishable by two years' imprisonment and a fine of € 150,000 (articles L. 716-9 to L. 716-11). The Tribunal may also order the total or partial, permanent or temporary, five-year closure of the establishment used to commit the offense (Article L. 716-11-1), the posting of the judgment pronouncing the conviction and its publication in its entirety or in extracts from newspapers (Article L. 716-13), confiscation or destruction of the products and / or instruments used to commit the offense (Article L. 716-14) and of course condemn the counterfeiter to be paid to the owner of the authentic mark of damages if the latter justifies a prejudice.