Industrial Property Law

A copyright constitutes a prior use that can be the basis for an action for invalidation of a later trademark ( Article L. 711-3, I, 6° IP Code) if the latter reproduces its characteristic elements . A mark protected by copyright can therefore only be registered by a third party with the consent of the author or his successors in title. Designs and models (dessins and modèles) also constitute prio …

Copyright and design rights

A copyright constitutes a prior use that can be the basis for an action for invalidation of a later trademark ( Article L. 711-3, I, 6° IP Code) if the latter reproduces its characteristic elements . A mark protected by copyright can therefore only be registered by a third party with the consent of the author or his successors in title. Designs and models (dessins and modèles) also constitute prior use that can be the basis for a trademark invalidity action ( Art. L. 711-3, I, 7° IP Code).

Prior use resulting from the existence of a copyright or a design affects the validity of the subsequent trademark, regardless of the goods or services it designates. The plaintiff in the invalidity action must show that he is the owner of the right, that the work or design in question has prior art, and that the existence of the contested mark would infringe those rights.

Prior use constituted by a copyright is sometimes asserted defensively: the owner of a mark who wishes to prevent an invalidity action being brought against him may invoke the fact that he held a copyright in the sign constituting this mark prior to the protection of the sign opposed . A copyright on a logo can also be the basis for an action for invalidation of a later trademark even if the logo consists of a combination of a company name (dénomination sociale) that is not infringed by the trademark and a graphic design .

CA Paris, 20 November 2018, LawLex202100006525JBJ; Cass. com. 25 January 2000, LawLex202200001910JBJ.

CA Paris, 16 January 2008, LawLex202100006521JBJ, relating to a dispute between the owner of a mark consisting of an original slogan and the owner of an earlier mark; Cass. com. 4 July 2006, LawLex202100005312JBJ, which specifies that a company may not rely on its corporate name to prevent the registration of a mark if the applicant had a copyright in the mark before the company was incorporated.

Cass. com, 25 January 2017, LawLex201700000180JBJ.

Industrial Property Law

63. Copyright and design rights

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63. Copyright and design rights

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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