Industrial Property Law

A reputed trademark is a trademark that is known by a significant part of the public concerned by the goods or services it covers . The owner must prove the renown of his or her trademark, which can be established by any means . To assess repute, the court takes into consideration the market share held by the trademark, the intensity, geographical scope and duration of its use, as well as the exte …

Reputed trademarks (marque renommée)

A reputed trademark is a trademark that is known by a significant part of the public concerned by the goods or services it covers . The owner must prove the renown of his or her trademark, which can be established by any means . To assess repute, the court takes into consideration the market share held by the trademark, the intensity, geographical scope and duration of its use, as well as the extent of the investments made by the undertaking to promote it, by looking at whether, taken as a whole, these elements demonstrate that the trademark has a reputation . The owner of a European trademark with a reputation does not have to demonstrate repute in the territory of the Member State where the application for registration of the subsequent national trademark was registered .

The Ordinance of 13 November 2019, transposing Article 5(3)(a) of Directive No 2015/2436, granted the reputed trademark extended protection. Article L. 711-3, I, 2° of the Intellectual Property Code thus provides that when the trademarks in question are identical or similar, whether the goods or services concerned are the same, similar or not similar, the trademark with a reputation constitutes prior art if the use without just cause of the second trademark would take unfair advantage of its distinctive character or repute, or would be detrimental to them. In so doing, the legislator, in derogation of the principle of specialty, protects the reputed trademark against parasitic competition likely to weaken its commercial value. When the goods or services designated in the registration of the second trademark are neither identical nor similar to those covered by the trademark with a reputation, it is up to the owner to prove the injury or the unjustified use . In order to establish that the use of the later mark is likely to unduly benefit from the distinctiveness of the mark with a reputation or to cause prejudice to its owner, it is sufficient to prove that the degree of similarity between the mark with a reputation and the contested sign leads the relevant public to make a comparison between that sign and the mark, i.e., to establish a link between them, even if it does not confuse them. The existence of this link is assessed globally, taking into account all the relevant factors of the case, in particular the degree of similarity between the conflicting signs, the degree of similarity or dissimilarity of the goods or services at issue and of the relevant public, the degree of repute of the earlier mark, the degree of distinctiveness inherent in or acquired through the use of the earlier mark and the existence of a likelihood of confusion in the mind of the public . However, while the reputation of the earlier mark gives it a special distinctive character and gives it extensive protection, as it makes it more likely that the public will confuse it with the second mark , it is not sufficient in itself to create a risk of confusion or association .

The extended protection afforded by Article L. 711-3, I, 2° of the Intellectual Property Code only benefits a registered trademark, or one that is the subject of an application for registration in the territory in question, subject to its subsequent registration, but not a well-known (notoire) trademark within the meaning of Article 6 ter of the Paris Convention. The owner of a well-known trademark can only invoke, as the case may be, the fraudulent filing of the second trademark, which is characterized when a person who, knowing that a third party is using a trademark without having protected it, files it in his/her own name with the intention of possibly opposing its prior use . The person claiming fraudulent registration must prove, on the one hand, that he was the first to use the mark in a public, unequivocal, non-precarious and continuous manner and, on the other hand, that the alleged defrauder was aware of the rights pertaining to the mark .

CA Paris, 9 March 2018, LawLex202100005953JB.

Art. 1358 Civil Code concerning proof of legal facts.

Cass. com, 27 May 2021, LawLex202100003317JBJ; Cass. com, 8 July 2014, LawLex202200002230JBJ. 

CA Paris, 12 February 2021, LawLex202100005370JBJ.

Cass. com. 10 February 2009, LawLex202200000743JBJ.

CA Paris, 14 January 2022, LawLex202200001521JBJ.

CA Paris, 12 February 2021, LawLex202100005370JBJ; Cass com, 16 February 2010, LawLex202100006234JBJ; Cass com, 31 January 2018, LawLex202100006236JBJ; Cass com, 30 May 2018, LawLex202100006486JBJ.

CA Paris, 18 May 2021, LawLex202100005678JBJ.

CA Paris, 12 November 2003, LawLex200600000532JBJ; Cass. com. 19 October 1999, LawLex202100005801JBJ, an undertaking acts in bad faith when the graphics of the trademark registered in a class in which it was in direct competition with the well-known trademark La Poste have similarities likely to create confusion in the mind of the public.

CA Paris, 12 November 2003, LawLex200600000532JBJ.

Industrial Property Law

59. Reputed trademarks (marque renommée)

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59. Reputed trademarks (marque renommée)

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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