Industrial Property Law

Article L. 711-3, I, 1° of the Intellectual Property Code provides that a trademark may not be registered, and if registered, may be declared invalid, if it infringes on an already existing trademark, provided that the trademark has been in genuine use for an uninterrupted period of five years . The law establishes a principle of absolute protection of the trademark where the marks and the designa …

Earlier trademark

Article L. 711-3, I, 1° of the Intellectual Property Code provides that a trademark may not be registered, and if registered, may be declared invalid, if it infringes on an already existing trademark, provided that the trademark has been in genuine use for an uninterrupted period of five years . The law establishes a principle of absolute protection of the trademark where the marks and the designated goods or services are identical or similar.

According to Article L. 711-3, II of the Intellectual Property Code, an earlier (or prior) trademark includes

- registered French trademarks, European Union trademarks, or internationally registered trademarks having effect in France,

- unregistered marks for which an application for registration has been filed, subject to their subsequent registration, or

- well-known marks within the meaning of Article 6 bis of the Paris Convention.

A trademark must be registered or an application for registration must be filed in order to constitute prior art, which is assessed by comparing the filing dates, taking into account, if applicable, the priority right invoked in support of these trademarks, or the priority validly claimed by a European Union trademark ( Article L. 711-3, II, paragraph 2 IP Code). The registration requirement does not apply to a well-known mark (marque notoire) within the meaning of Article 6 bis of the Paris Convention which, as an exception to the principle according to which the acquisition of the right to the mark results from a registration of the mark with the National Institute of Industrial Property, benefits from protection in the territory in question without being registered there because it is well-known there . The fact that a mark is well-known implies that, for each of the goods or services concerned, the mark is known by a large fraction of the French public as a trademark at the time of filing of the trademark to which it is opposed . It is up to the owner of the well-known trademark to demonstrate its notoriety in order to claim its priority. The well-known nature of the trademark gives its owner the right to file an opposition .

The principle of unavailability of a prior trademark allows the trademark to fulfill its essential function, which is to guarantee to consumers the identity of the designated product or service, by allowing them to distinguish without possible confusion the covered product or service from those having another origin . The mere filing of a trademark, independently of its use, may constitute an infringement of the prior trademark, because it is likely to paralyze the use of the prior trademark and prevent its owner from exercising his property right . According to Article L. 711-3, I, 1° of the Intellectual Property Code, infringement of the prior trademark covers two situations:

- dual identity ( Article L. 711-3, I, 1°, a) IP Code): infringement occurs when the second trademark is identical to the earlier trademark and the goods or services it designates are identical to those for which the earlier trademark is protected;

- similarity ( Article L. 711-3, I, 1°, b) IP Code): the infringement is constituted when the second trademark is identical or similar to the earlier trademark, to designate goods identical or similar to those for which the earlier trademark is protected, if there is a likelihood of confusion in the mind of the public, including the likelihood of association, with the earlier trademark .

According to the European Court of Justice, a mark is identical when it reproduces, without modification or addition, all the elements constituting the mark or when, taken as a whole, it contains differences so insignificant that they may pass unnoticed by the average consumer .

Both identity and similarity are measured by the likelihood of confusion, the proof of which lies with the owner of the first mark . The courts must determine whether the services or products designated in the earlier and the later trademark applications have a complementary character that could lead the public to attribute a common origin to them . If the goods or services covered are neither identical nor similar, the likelihood of confusion must be ruled out . The court must also examine the overall impression produced by the marks, taking into account the distinctive and dominant elements , with regard to the similarities, and not only the differences, between the marks at issue . The existence of a likelihood of confusion in the mind of the public is assessed globally, taking into account all the relevant factors of the case , and in particular the intensity of the reputation of the first mark, the degree of its distinctive character, intrinsic or acquired through use , and the similarity, if not the identical nature, of the goods or services at issue . Significant differences between the marks cannot be offset by the closeness of the goods and services or by the reputation of the earlier mark, which is merely an aggravating factor . The use of the mark “Frontline” was not able to damage the reputation of the mark “Fiproline”, assuming that it was established, since the marks “Frontline” and “Fiproline” do not have any visual, auditory or intellectual similarity . The reputation enjoyed by the name “Pathé” in the film industry is not such as to make it prevail in the minds of customers over the representation of the rooster for clothing products .

Cass. com. 18 May 2010, LawLex202200000518JBJ.

Cass. com, 20 March 2012, LawLex202200000521JBJ.

CA Paris, 2 November 2021, LawLex202200000869JBJ.

CA Bordeaux, 12 April 2010, LawLex202200001649JBJ, Cass. com. 12 June 2012, LawLex202200001782JBJ, the Court of Appeal fails to provide a legal basis for its judgment when it neglects to examine the overall impression produced by the earlier mark and the disputed sign by taking into consideration the color, material, facet size, as well as the overall three-dimensional appearance of the disputed mark.

Cass. com, 25 March 2014, LawLex202200000366JBJ, CA Paris, 9 March 2022, LawLex202200001479JBJ.

CA Bordeaux, 12 April 2010, LawLex202200001649JBJ.

Cass. com, 7 July 2021, LawLex202100004644JBJ.

Cass. com, 31 January 2018, LawLex202100006236JBJ.

CA Paris, 18 May 2021, LawLex202100005678JBJ; Cass. com, 13 October 2021, LawLex202200000258JBJ.

Cass. com., 27 May 2021, LawLex202100003279JBJ.

Cass. com., 16 May 2000, LawLex202100006546JBJ.

CA Paris, 15 December 2017, LawLex202200001434JBJ.

CA Paris, 16 October 2013, LawLex202200001433JBJ.

Cass. com, 19 December 2006, LawLex202200001638JBJ; Cass. com, 20 November 2012, LawLex202200000522JBJ, for filing a trademark and using it to market alcoholic beverages that interfered with the free use of an earlier trademark covering perfumes and candles.

The distinctive character of the second mark is not sufficient to exclude the risk of confusion: see Cass. com. 15 March 2017, LawLex202100005800JBJ.

ECJ, Case C-291/00 LTJ Diffusion SA, Judgment of 23 March 2003, LawLex200900001413JBJ; see also. Cass. com, 2 July 2002, LawLex202200000217JBJ.

The fact that goods or services belong to the same class or to different classes according to the system established by the Nice Agreement of 15 June 1957 has no bearing on the assessment of their identity or similarity (Art. R. 712-3-1 IP Code).

Cass. com, 27 March 2019, LawLex202100006487JBJ.

Industrial Property Law

58. Earlier trademark

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58. Earlier trademark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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