Industrial Property Law

Since the legal reform initiated by the Ordinance of 13 November 2019, filing in bad faith constitutes a cause for absolute nullity of the trademark under Article L. 711-2, 11° of the Intellectual Property Code. Previously, case law already held that a trademark filed in bad faith was absolutely null and void on the basis of the adage “Fraus omnia corrumpit” (fraud corrupts all)  even though the I …

Filing in bad faith

Since the legal reform initiated by the Ordinance of 13 November 2019, filing in bad faith constitutes a cause for absolute nullity of the trademark under Article L. 711-2, 11° of the Intellectual Property Code. Previously, case law already held that a trademark filed in bad faith was absolutely null and void on the basis of the adage “Fraus omnia corrumpit” (fraud corrupts all)  even though the Intellectual Property Code only considered fraud in the context of the claim action under Article L. 712-6 of the Intellectual Property Code  .

The applicant is in bad faith when by filing a trademark application he seeks to divert the trademark right from its essential purpose of distinguishing goods by identifying their origin  with a view to obtaining an exclusive right for purposes other than those pertaining to the functions of a trademark or to prejudice the interests of a third party in a manner not in accordance with honest practices . The plaintiff in the action for invalidity for fraudulent filing does not have to justify prior rights in the mark at issue, but rather the deliberate disregard of interests by the applicant , since bad faith cannot be inferred from the mere negligence of the latter . Bad faith, which can be used to characterize a fraudulent filing, must be assessed in its entirety, taking into account all the relevant circumstances . An applicant acts in bad faith if he seeks to deprive the owner of a prior right of a mark necessary for his business , to challenge the registration in the context of an infringement action  and to obtain an unjust profit , to prevent him from using his trade name , to block or hinder the entry of his products into the market  or to create confusion with his activities , in particular in order to misappropriate the reputation of his mark with the aim of causing damage to him . On the other hand, the filing is not made in bad faith when the applicant justifies a legitimate interest in preserving his rights because of the continuous use he makes of the mark to identify the services he provides, and not to harm a competitor by depriving him of a mark necessary for his activity .

The fraudulent nature of the filing is assessed on the day of the filing  and not with regard to the subsequent use of the mark .

Fraudulent applications were deemed to have been made, inter alia by a merchant who was fully aware of the use of the mark by an undertaking as a trade name, company name and sign, and of the imminent opening by that company of a branch in the same city as that undertaking  or the filing of trademarks based on references commonly used in scientific and professional circles in order for the owner to attempt to secure a monopoly for its parent company thus controlling all other companies operating on the French market and preventing any potential competitor from producing and distributing products using the same references .

Cass. com., 17 March 2021, LawLex202100000795JBJ.

CA Nîmes, 21 March 2013, LawLex202200007830JBJ; CA Paris, 17 September 2021, LawLex202100005772JBJ.

Cass. com, 14 December 1999, LawLex202200000025JBJ.

Cass. com, 17 March 2021, LawLex202100000795JBJ.

Cass. com, 1 March 1994, LawLex202200000080JBJ.

Cass. com, 9 March 1993, LawLex202200000036JBJ.

CA Paris, 17 September 2021, LawLex202100005772JBJ.

CA Paris, 17 September 2021, LawLex202100005772JBJ; CA Paris, 26 May 2017, LawLex201700000932JBJ.

CA Paris, 26 May 2017, LawLex201700000932JBJ.

Cass. com. 12 July 1976, LawLex202100006528JBJ.

Cass. com, 1 June 1999, LawLex202100005350JBJ.

Cass. com, 8 February 2017, LawLex202100005806JBJ; CA Paris, 17 September 2021, LawLex202100005772JBJ.

Cass. com, 12 December 2018, LawLex201800001995JBJ; CA Paris, 26 May 2017, LawLex201700000932JBJ.

Cass. com, 10 May 2006, LawLex202200007819JBJ.

Cass. com, 8 February 2017, LawLex202100005806JBJ.

CA Nîmes, 21 March 2013, LawLex202200007830JBJ: in this case, the applicant had sought to appropriate the mark in order to prohibit its use by a municipality unless it agreed to pursue their collaboration.

Industrial Property Law

55. Filing in bad faith

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

55. Filing in bad faith

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise