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.