August 9

Trademark registration: don't overdo it!


Trademark registration: don't overdo it!

Trademark law does not like filings that are the result of an abusive practice. Article L. 712-6 of the French Intellectual Property Code (CPI) prohibits trademark registrations made with the intention of to deprive others of a sign necessary to their activity. This article provides: "if a registration has been applied for either in fraud of the rights of a third party or in violation of a legal or conventional obligation, the person who believes he has a right to the trademark may claim ownership in court. »

A deposit made in an abusive manner can have serious consequences. Several owners of fraudulent trademarks have been prosecuted and ordered to pay damages to the true trademark owner. Here is a review of some cases that have been found to be abusive.

The courts make a distinction between two abusive practices: trademarks that constitute obstacles to free competition, and those that consist in usurping the name of a third party.

1er type of abusive deposit: the bookmark or grant mark

In trademark cases, the applicant will act to acquire a monopoly on a sign in order to monetize its use.

For example, the registration of the trademark "Stade de France" for clothing is fraudulent. The court indeed retained the bad faith of the applicant (TGI Paris, 13/10/1998). The applicant had filed the trademark the day after the name of the sports complex was made public.

Similarly, the "Paris 2012", "Paris 2016" and "Paris 2024" deposits are fraudulent. It does not matter whether or not the city of Paris was selected for the Olympic Games on those dates. Indeed, it is customary to use the name of the city and the year of organisation to communicate about this event. Appropriating these marks before any official validation constitutes an abusive act. (TGI Paris, 14/03/2007).

Some registrations have the sole purpose of charging third parties for the use of the trademark. This is the case when the applicant does not wish to use his trademark himself, because he is engaged in a completely different activity. For example, a "Halloween" trademark was registered for sweets. However, the applicant was not active in this sector of activity at all. The judges held that the purpose of this registration was to oblige professionals to sign licenses to use this name. The Court thus annulled this abusive deposit (Cass. Com., 21/09/2004).

2nd type of fraudulent deposit: usurpation

This type of abusive deposit is characterized by the bad faith of the depositor. The applicant knows that the trademark application will harm the interests of a third party. This is the case of a consulting firm that has confidential information about a company and that is going to appropriate a name that the company covets.

For example, the registration of the trademark "Corona Extra" by a beverage distribution company is abusive. Indeed, the sole purpose of the applicant was to anticipate the arrival of Mexican beer on the French market (CA Bordeaux, 28/02/1994).

More recently, the association "Société Protectrice des Animaux" (SPA) obtained the cancellation of the SPA DE FRANCE trademark. The competing association "Défense de l'Animal" had registered the trademark in 1989. The judges considered that given the seniority of the SPA (founded in 1845) and its reputation, the registration had been made fraudulently (CA Paris, 30/03/2018). In the Court's view, the main purpose of the filing was to deprive the SPA of the use of that name necessary for its activity.

These abusive deposits are also found when two partners work together on a project. One of the two chooses to file in its own name (without informing the other). This situation is quite classic. This was notably the case for the trademark "Vichy Douceur", registered by a third party co-organizer of the homonymous event. (Cass. Com., 02/06/1992).

Exercise caution to avoid improper filing

In such cases and to avoid costly legal action, it is best to discuss this issue in advance with all partners. This discussion should in particular designate the owner of the trademark but also the possible sharing of costs. For the owner, it is possible to choose the one who originally found the name, but it is also possible to choose to file the trademark as a joint owner (in which case several applicants can be indicated).

To avoid making yourself guilty of a fraudulent deposit, it is therefore better to opt for maximum transparency.

If, on the other hand, you believe that you have been harmed by a trademark application filed by a third party (former partner, competitor, etc.), do not hesitate to contact us. Our experts are here to advise you.


abuse, trademark registration, fraud, nullity

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