Industrial Property Law

The owner's right to his or her trademark is limited to the goods and services designated in the wording of the application. The sign is protected only insofar as it designates those goods or services . This speciality principle is derived from Article L. 711-1 of the Intellectual Property Code, according to which the purpose of a trademark is to distinguish the goods or services of one person fro …

Designation of a product or service: principle of speciality

The owner's right to his or her trademark is limited to the goods and services designated in the wording of the application. The sign is protected only insofar as it designates those goods or services . This speciality principle is derived from Article L. 711-1 of the Intellectual Property Code, according to which the purpose of a trademark is to distinguish the goods or services of one person from those of another, and from Article L. 713-1, which provides that registration confers on the trademark owner a property right in the trademark for the goods and services designated by him.

The purpose of the speciality principle is to prevent a trademark owner from misusing trademark law to engage in anticompetitive practices, in particular to establish a monopoly of use. It preserves the freedom of expression of creators and the freedom of trade . A trademark owner who, by appropriating the sign “29” identifying a department, to reserve for himself privileged and monopolistic access to a local market to the detriment of other operators, thus commits a circumvention of trademark law . The same is true of the owner who relies on his trademark rights to claim a monopoly of exploitation of his horsebit-shaped design in the field of jewelry .

Any application for registration of a trademark must include a list of the goods or services for which it is sought, as well as a list of the corresponding classes . Protection does not necessarily extend to all the goods in the class in which the mark has been filed. Therefore, the goods and services must be designated with sufficient clarity and precision to enable any person to determine the scope of protection . The sign is only protected for identical or similar goods .

Since, by virtue of the principle of speciality, a sign is protected only for the goods and services covered at the time of filing, the use of a sign that is not intended to identify goods or services cannot constitute an infringement. This is the case of the title of a work which only identifies and individualizes the work itself, without having the purpose of distinguishing the book in which the work is embodied .

On the other hand, it is irrelevant, in order to claim trademark protection, whether the use of the trademark has a commercial purpose or an “economic coloring”. A trademark used by a non-profit association to identify the origin of the services offered, even if they are not commercial, may benefit from trademark protection .

Cass. com. 27 May 1986, LawLex202100006507JBJ.

CA Paris, 18 January 2012, LawLex202100005283JBJ.

Cass. com. 23 June 2009, LawLex202100005661JBJ.

Art. L. 712-2 and R. 712-3, 1°, a) of IP Code

Cass. com., 17 June 1980, LawLex202100006548JBJ

CA Paris, 26 May 2010, 08/15425, PIBD 2010, III, 491,  the title of the work “Elles ont posé pour lui” (They posed for Him) does not constitute an infringement of the trademark “Lui” as long as it is not used as a trademark; Cass. com. 7 May 2019, LawLex202100005310JBJ.

CA Lyon, 20 December 2012, LawLex202100005717JBJ.

Industrial Property Law

28. Designation of a product or service: principle of speciality

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Les notions juridiques connexes

28. Designation of a product or service: principle of speciality

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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