Industrial Property Law

The reproduction, imitation, affixing, removal or modification of a trademark, including collective or guarantee trademarks, is prohibited if it is done in breach of the rights conferred by its registration and of the prohibitions deriving from the latter (Article L. 716-10, para. 1, c) IP Code). This provision echoes the prohibitions of use incurring the civil liability of the perpetrator as prov …

Reproduction/Imitation/Use/Affixing/Removal/Modification of the mark

The reproduction, imitation, affixing, removal or modification of a trademark, including collective or guarantee trademarks, is prohibited if it is done in breach of the rights conferred by its registration and of the prohibitions deriving from the latter (Article L. 716-10, para. 1, c) IP Code). This provision echoes the prohibitions of use incurring the civil liability of the perpetrator as provided for in Articles L. 713-2 et seq. of the Intellectual Property Code. By way of exception, the infringement is not deemed to have been committed if the use of the trademark comes from medical prescription management systems that allow, if the prescriber so decides, the prescription of a drug in an international non-proprietary name, in accordance with the rules of good practice set out in Article L. 161-38 of the Social Security Code (Article L. 716-10, para. 1, c) IP Code).

Thus, when committed without the authorization of the proprietor of the right, it is a criminal offense to imitate the trademark by reproducing its typical figurative elements , to affix an imitation trademark to goods similar to those designated by the protected trademark  or to deliberately persist in the use of a trademark after the termination of the contract granting the license . It is also an offense of unlawful use of a trademark if the seller presents tables of correspondence in the form of comparative lists between his products and those of other undertakings, leading potential buyers to believe that this comparison implies a resemblance or imitation  or to refer to the trademarks of products distributed and sold by competing undertakings , even with the addition of a word intended to indicate similarity, such as formula, manner, system, imitation or kind , and even if the products offered and those taken as a reference are manufactured and distributed by undertakings belonging to the same financial group .

The offense is constituted when the accused person cannot provide evidence of authorization from the right holder, the absence of which implying, in the absence of proof to the contrary, his guilty intent  , with the result that a court cannot acquit the accused person without finding that the proprietor of the right has authorized the disputed use .

Cass. com., 19 novembre 1991, LawLex202100002920JBJ.

Cass. com, 3 June 1998,  LawLex202200002606JBJ.

See e.g., Cass. crim, 4 December 2018, LawLex201800001911JBJ.

Cass. com, 16 October 1985, LawLex200300002644JBJ; Cass. com, 2 February 1988, LawLex200300002646JBJ.

Cass. crim., 7 January 1981, LawLex202200002549JBJ.

Cass. crim, 7 January 1981, LawLex202200002549JBJ; Cass. crim, 28 April 1977, LawLex202200002447JBJ.

Cass. crim. 7 January 1981, LawLex202200002549JBJ.

Cass. crim. 1 February 1990, LawLex202200002448JBJ.

Industrial Property Law

172. Reproduction/Imitation/Use/Affixing/Removal/Modification of the mark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

172. Reproduction/Imitation/Use/Affixing/Removal/Modification of the mark

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise