Industrial Property Law

Since the owner's right to the mark is a right of use (droit d’occupation), which vests in the first applicant, only a mark that is available can be registered: there must be no prior right to the mark in favor of a third party in the territory covered by the registration. Article L. 711-3 of the Intellectual Property Code provides a non-exhaustive list of prior rights that may render a mark unavailable . Since the National Institute of Industrial Property is not required to verify the availability of the mark at the time of filing  it is up to the applicant to carry out this verification by conducting a prior art search.

Article L. 711-3 declares null and void a trademark that infringes a prior right. The unavailability of the mark constitutes a cause of relative nullity of the mark that only the owner of the prior right can invoke . On the other hand, the owner of a prior right who has tolerated the use of a registered trademark for five consecutive years, with knowledge of such use, is no longer entitled to request the invalidity of the trademark for the goods or services for which he tolerated the use, unless the registration was requested in bad faith ( Art. L. 716-2-8 IP Code) .

The scope of unavailability differs according to the prior art. In effect, in the case of a trademark, a name or company name, a trade name, a sign or a domain name, the principle of speciality limits the unavailability of the mark to the goods or services designated or to the economic activity in question, which are identical or similar, the infringement of the rights of the owner being reflected in a risk of confusion between the marks . On the other hand, when the prior art concerns copyrights, designs, personality rights, appellations of origin, or the rights of a local authority or a public establishment of inter-municipal cooperation over its name, image or reputation, the unavailability extends to the entire economic sector covered. In all cases, the prior art of a mark does not prevent it from being used by a third party if there is no risk of confusion . In this way, the principle of the unavailability of a mark does not constitute an obstacle to the free movement of goods, nor an infringement of free competition, and cannot therefore be considered as violating the freedom of trade and industry .

The Ordinance of 13 November 2019 added to that list reputed trademarks with a reputation ( Art. L. 711-3, I, 2° IP Code), domain names (Art. L. 711-3, I, 4° IP Code), and the name of public entities (Art. L. 711-3, I, 10° IP Code). It also introduced Article L. 711-3, III, which provides for the invalidity of a trademark whose registration has been applied for by the agent or representative of the owner of a trademark protected in a State party to the Paris Convention, in his own name and without the owner's authorization, except where the agent or representative provides justification for the application.

Cass. com, 20 December 1988, LawLex202200000975JBJ; Cass. com, 4 July 1966, LawLex202200001867JBJ.

Cass. com, 16 February 2010, LawLex202100006234JBJ, concerning an earlier copyright.

CA Paris, 2 November 2021, LawLex202200000869JBJ, which excludes infringement of the prior trademark due to the lack of similarity between the sectors concerned.

CA Paris, 2 November 2021, LawLex202200000869JBJ, Cass. com, 13 December 2005, LawLex200500010356JBJ; Cass. com, 20 February 2007, LawLex202100006553JBJ: in this case, the infringement of the earlier trademark is established because the domain names reproduce its distinctive element.

CA Versailles, 15 May 2018, LawLex202200000032JBJ, which states that the clause in a licensing agreement, which incorporates the provisions of the Intellectual Property Code according to which a mark infringing prior rights, and in particular a prior registered trademark, may not be adopted as a trademark, does not constitute a hindrance to the free movement of goods, nor an infringement of free competition, and cannot therefore be considered contrary to the freedom of trade and industry.

57. Availability of trademark