Industrial Property Law

Article L. 711-3, I, 4° of the Intellectual Property Code protects the prior art of a trade name (nom commercial), a shop sign (enseigne) or a domain name (nom de domaine), whose scope is not only local, if there is a risk of confusion in the public mind. That protection extends to signs that identify public establishments to users  .
A trade name is the name under which the trader, whether a natu …

Trade names/Signs/Domain names

Article L. 711-3, I, 4° of the Intellectual Property Code protects the prior art of a trade name (nom commercial), a shop sign (enseigne) or a domain name (nom de domaine), whose scope is not only local, if there is a risk of confusion in the public mind. That protection extends to signs that identify public establishments to users  .

A trade name is the name under which the trader, whether a natural or legal person, carries on his activity, whereas a shop sign designates a sign that identifies the establishment. Consolidating case law in this area, the Ordinance of 13 November 2019 added to Article L. 711-3, I, 4° of the Intellectual Property Code the reference to the domain name as prior art. A domain name constitutes prior art enforceable against a trademark if it is established that it was actually being used prior to the filing of the trademark . The rights to a trade name and a shop sign are acquired by their first public use on French territory . This first use gives the owner a priority that allows him to oppose the registration of a later trademark , without having to establish that the sign was recorded in a public register or that it was known to the owners of the trademark against which he is opposing it . On the other hand, the first use does not give him any priority to register this sign as a trademark , and cannot be invoked in support of an action for trademark infringement .

The prior use of a trade name, a sign or a domain name presupposes the meeting of two cumulative conditions: the mark must not be only local in scope, and there must be a likelihood of confusion between this mark and the mark to which it is opposed. It is not necessary to establish the existence of fraud committed by the trademark applicant . The risk of confusion is assessed by comparing the goods or services designated by the mark with the activity of the trader who owns the trade name or sign, or with the goods, services or activities offered on the internet site of the domain name holder . The mark must be known throughout the national territory on the date of filing of the trademark  , used as a trade name, sign or domain name, and perceived as designating the goods or services constituting the subject matter of the trader's actual activity . An undertaking that uses a mark to market a formula of its service offering without using it as a trade name cannot claim a prior right enforceable against a mark . The concept of being known throughout the national territory, as distinct from that of being well-known, does not mean that the mark must be known by a very large public, but that it must be widely distributed throughout the national territory . The fact that the trade name belongs to a foreign undertaking is irrelevant as long as the trade name is used on French territory . A trade name has a national reach when advertisements for it have been distributed throughout the country . This is not the case, however, where the reputation of the company is the result of one article published in a national newspaper which merely reported a sensational event linked to a news item but which does not merit longer-term coverage .

CA Paris, 18 September 1998, LawLex202100006508JBJ.

CA Paris, 15 September 2004, LawLex202100006509JBJ, which states that the owner of a domain name who claims that his mark has prior art must show that it was actually being used before the registration of the mark. This use must be in effect in France pursuant to Article L. 711-3, paragraph 1, of the Intellectual Property Code. However, the question of the territoriality of the domain name may raise difficulties, as its legal regime depends on its suffix (.fr, .com or .eu).

CA Paris, 9 September 2014, LawLex201400000907JBJ.

CA Paris, 15 October 1997, LawLex202100006496JBJ.

Cass. com, 29 June 1993, LawLex202100006504JBJ.

Cass. com, 13 December 1988, LawLex202100006500JBJ.

CA Rennes,  11 June 2024, LawLex202400004471JBJ.

Cass. com, 29 June 1999, LawLex202100006502JBJ; Cass. com, 17 July 1984, LawLex202200001862JBJ, the owner of a trade name who has not used it in France before the use by a third party of the trademark reproducing this name, cannot take advantage of its prior art to market his products under this name.

Cass. com, 3 July 2001, LawLex202100006495J.

Cass. com. 29 June 1999, LawLex202100006502JB.

Cass. com, 20 February 2007, LawLex202100005345JBJ; Cass. com, 12 October 1993, LawLex202200001864JBJ.

Cass. com, 25 March 2014, LawLex202200000366JBJ.

Cass. com. 28 January 1980, LawLex202200001865JBJ.

Cass. com, 25 January 2017, LawLex201700000180JBJ, which ruled out the risk of confusion between, on the one hand, the domain name of a company having a public works and rope access works activity and, on the other hand, a trademark designating goods and services related to leisure activities, even if the owner indicated a via ferrata project on its website; Cass. com, 13 December 2005, LawLex200500010356JBJ, the Court of Appeal, which neglected to investigate whether the goods and services offered on the website by the domain name holder were identical or similar to those referred to in the earlier trademark application, did not establish the likelihood of confusion.

CA Paris, 26 February 1997, LawLex202100006505JBJ; CA Paris, 15 October 1997, LawLex202100006496JBJ, the legislator aims to prevent a name that is known only in a limited area from taking precedence over a registered trademark, when it is neither subject to registration nor to payment of fees.

Industrial Property Law

61. Trade names/Signs/Domain names

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Les notions juridiques connexes

61. Trade names/Signs/Domain names

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise