Industrial Property Law

A reputed trademark (marque renommée) is defined by case law as a trademark that is known to a significant part of the public concerned by the goods or services covered by it . The European trademark that has acquired a reputation must be known in a significant part of the territory of the EU, which may coincide with the territory of a single Member State .
The reputed trademark is to be distingui …

Reputed trademark

A reputed trademark (marque renommée) is defined by case law as a trademark that is known to a significant part of the public concerned by the goods or services covered by it . The European trademark that has acquired a reputation must be known in a significant part of the territory of the EU, which may coincide with the territory of a single Member State .

The reputed trademark is to be distinguished from the well-known trademark (marque notoire) in that it refers to a trademark registered in the relevant territory, whereas the well-known trademark offers its owner protection even though it is not registered in the relevant territory. The reputed trademark entitles its owner to bring actions based on trademark law, whereas the owner of a well-known trademark benefits from a civil liability action, subject to the five-year statute of limitations of ordinary civil law (Art. 2224 Civil Code).

The repute of a trademark is assessed at the date of exploitation of the sign  . The courts take into consideration the use of the sign as registered, and any use of the sign in a form that differs from the registered form by elements that do not alter its distinctive character. The two-dimensional representation of a three-dimensional mark may facilitate the recognition of the mark by the relevant public when it allows the essential elements of the three-dimensional shape of the product to be perceived .

The courts must consider whether all the relevant elements of the case, taken as a whole, demonstrate that the mark is known by a significant part of the relevant public . The relevant public means the French public for a French trademark, and the European public for a European trademark. A European trademark is not known by a significant part of the public when only the French public is concerned . The public's familiarity with the trademark is assessed in particular in consideration of the market share it holds, the intensity, geographical extent and duration of its use, as well as the scale of the investments implemented by the undertaking to promote it . The Court of Cassation thus considered that the principle according to which the reputation of a trademark is necessarily limited to the public concerned by the goods or services for which that reputation has been acquired does not apply to the “Tour de France” trademark, whose reputation is so exceptional that it is known to the entire French public .

With the Ordinance of 13 November 2019, the rules governing reputed trademarks have changed significantly. 

Whereas infringements of a reputed trademark were previously sanctioned in the context of civil liability (former Art. L. 713-5 IP Code), they are now sanctioned for IP infringement (Art. L. 716-4 IP Code, referring to Art. L. 713-3 IP Code). A reputed trademark benefits, in addition, from an extended protection . Thus, Article L. 713-3 of the Intellectual Property Code prohibits the use, in the course of trade, of a sign that is identical or similar to the reputed trademark, if such use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trademark. The use of a sign that contributes to trivializing the reputed trademark by diminishing its appeal to consumers and altering their economic behavior by turning them away from it constitutes an injury to its distinctiveness . The distribution of goods of a lower quality under an infringing sign is likely to degrade the products of the reproduced reputed trademark and to divert part of its clientele from the appreciation of the brand . Proof of infringement of a reputed trademark does not require a comparison of the goods or services designated by each of the signs . The owner must, however, establish the existence, in the mind of the public, of a link between the two signs, which is assessed in light of the repute and distinctive character of the latter . If there is a likelihood of confusion that leads the public to believe that the sign at issue is related to the reputed trademark as a variation of it, the court must determine whether the use of the sign for products that are not similar to those designated in the registration of the reputed trademark is likely to undermine its distinctive character .

The ordinance also gives the owner of the reputed trademark a right of action for invalidity against the applicant of a sign identical or similar to its trademark ( Art. L. 711-3, 2° IP Code), and authorizes the filing of an opposition against an application for the registration of such a sign ( Art. L. 712-4 IP Code).

CA Paris, 9 March 2018, LawLex202100005953JBJ.

Cass. com, 18 September 2019, LawLex202100005295JBJ.

CA Paris, 17 December 1992, LawLex202100005367JBJ.

CA Paris, 11 December 2015, LawLex202200000131JBJ.

Cass. com. 27 June 2018, LawLex202200000483JBJ.

Cass. com, 23 September 2008, LawLex202200000484JBJ.

Cass. com, 8 February 2017, LawLex202100005806JBJ.

Cass. com., 27 May 2021, LawLex202100003317JBJ, regarding the appearance of the Mikado chocolate cookie.

Cass. com. 27 May 2021, LawLex202100003317JBJ.

Cass. com. 5 June 2019, LawLex202100005309JBJ.

CA Paris, 9 March 2018, LawLex202100005953JBJ; Cass. com. 5 June 2019, LawLex202100005309JBJ, trial courts must examine and analyze, even if summarily, the turnover and sales volumes of products, communication and advertising campaigns and press articles published in the general and specialized press; Cass. com. 27 May 2021, LawLex202100003317JBJ.

Cass. com., 19 March 2025, LawLex202500001931JBJ.

CA Paris, 11 December 2015, LawLex202200000131JBJ; Cass. com. 9 March 2010, LawLex202100005677JBJ, the reputation acquired by the “Yellow Pages” trademark extends for telephone directories to the noun “Pages” alone and confers its distinctiveness.

Industrial Property Law

40. Reputed trademark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

40. Reputed trademark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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