July 23

Can we use a trademark that is already registered?


Can we use a trademark that is already registered?


Counterfeiting is defined as the reproduction, imitation or use of an intellectual property right without the authorization of its owner. Thus, the fact of using a trademark registered by a third party, makes you potentially guilty of counterfeiting.


Infringement by reproduction: using an identical trademark

By reproducing a third party's trademark without his authorization, one risks being attacked for infringement by the third party. However, in principle, the trademark must have been used for goods or services identical (or very similar) to those referred to in the registration certificate. Thus, if the disputed trademark designates only clothing and you use it to sell drinks, there is no likelihood of confusion. Conversely, if you use it on T-shirts or caps (even promotional ones), it is an infringement by reproduction and you could be sued.

Some hope to get around this problem by making slight changes to the brand. There is also a myth that 5 or 7 elements of differentiation between two signs/logos would be necessary to rule out infringement. This idea is totally wrong. Indeed, mere imitation of the mark may also constitute an infringement.


Counterfeiting by imitation: using a modified trademark

Article L. 713-3 of the Intellectual Property Code allows a trademark owner to take action for infringement even if his trademark has not been reproduced identically. The idea is to punish the ploy to avoid reproducing a registered trademark in favour of a very similar sign. For example, in the 1920s, a court convicted merchants who used the name "Aux Galeries Layettes" (for imitation of the trademark "Aux Galeries Lafayette").

In this case, the trademark owner must prove that there is a likelihood of confusion (or at least a likelihood of association) in the mind of the average attention consumer. In particular, the judges will compare the two signs in order to assess the visual, phonetic and/or intellectual similarities. A famous example of counterfeiting by intellectual imitation is the case of "The Serious Cow". The trademark was a fraudulent imitation of "The Laughing Cow".


Illegal use of a trademark

In some cases, the use of a third party's trademark may constitute an act of infringement. This is particularly the case in advertising. Thus, the practice of appellate trademarks is punishable. In this case, a salesman puts forward a trademark in an advertisement to attract new customers. But he does not have sufficient stock of the products of the trademark used to meet the potential demand. The idea is to use a trademark to divert customers.

On the other hand, a use "outside business life" cannot be condemned a priori. For example, journalists may cite a registered trademark for information purposes. The same is true, it is possible, under certain conditions, to parody a registered trademark. But of course, the parodist must not be a competitor, and his objective must be legitimate (he must not profit from the caricature).


Conclusion: good faith and counterfeiting

Finally, it is important to note that in the civil courts, the good or bad faith of the infringer is irrelevant. Ignorance of the existence of a registered trademark cannot be invoked as a defence.

Therefore, in order to avoid using (and counterfeiting) an earlier trademark, particularly when launching a business and/or new products, it is essential to check the availability of the new name. This involves conducting similarity searches among the earlier marks..

Similarly, if you receive a letter of formal notice from a competitor and/or its lawyer, do not ignore it. This is often a first step before a legal action. The merits of the request should be considered before responding. And it is preferable not to use the disputed trademark during the proceedings. So as not to make any false moves, get expert advice.


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