Industrial Property Law

The protection of a sign by the law on literary and artistic property does not prevent its protection by trademark law. Thus, the title of an intellectual work ("creation of the mind") which has an original character and is protected by copyright , can also be registered as a trademark when it is used to designate products or services to guarantee their origin . A title designating a newspaper, a  …

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The protection of a sign by the law on literary and artistic property does not prevent its protection by trademark law. Thus, the title of an intellectual work ("creation of the mind") which has an original character and is protected by copyright , can also be registered as a trademark when it is used to designate products or services to guarantee their origin . A title designating a newspaper, a magazine , a collection of books , a film , or audio or video cassettes, figurines or advertising material  can therefore constitute a trademark.

While journals, newspapers  and book collections  constitute products within the meaning of trademark law if they are manufactured and offered for sale, this is not necessarily the case for books and, more generally, for “unique works” whose content is not subject to change. A third party's trademark can be used as the title of a book to designate a work, without infringing its essential function . While the Court of Cassation, in a judgment handed down on 4 April 2006, considered that no rule prohibits the author of a literary work from registering a title as a trademark and benefiting from trademark protection for the goods and services designated at the time of its registration , the scope of this stand-alone judgment remains unclear as it concerned the title of a series of books. In effect, even if books and periodicals can, in certain aspects, constitute a “product” that is the subject matter of commercial transactions, a title used to identify a book as an intellectual work, which proceeds from its essence and is an integral part of its personality independently of its marketing, is not intended to be protected by trademark law . The use of the words “nautical, sail and motor” in the summary of a publication or in a title of a heading , or the title “They posed for Him” to designate a unique intellectual work composed of pictures selected from a photographic collection , do not constitute use as a trademark either.

Art. L. 112-4, para. 1 of the IP Code: “ When the title of a creation of the mind is original, it is protected like the work itself ”.

Cass. com. 5 July 1977, LawLex202100005267JBJ; Cass. civ. 4 April 2006, LawLex200600001264JBJ.

CA Paris, 2 October 1996, LawLex202100005396JBJ.

Cass. com, 13 November 1968, LawLex202100005271JBJ.

Cass. Com. July 12, 2011, LawLex201100001254JBJ, which finds that in this case, the book as a “product” was identified by the name “Les Editions du Chêne”, the only one likely to guarantee to consumers the origin of the product and to constitute a trademark.

Cass. com. 13 November 1968, LawLex202100005271JBJ; Cass. com. 5 December 1967, LawLex202100005269JBJ.

Cass. com, 5 July 1977, LawLex202100005267JBJ.

Cass. civ., 4 April 2006, LawLex200600001264JBJ.

Cass. com, 30 October 2007, LawLex202100005666JBJ.

Cass. com. 4 October 1976, LawLex202100005266JBJ.

CA Paris, 13 June 2017, LawLex201700001061JBJ; Cass. com, 12 July 2011, LawLex201100001254JBJ.

Industrial Property Law

31. Titles

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31. Titles

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