Industrial Property Law

Introduced by the Law of 4 January 1991 , extinction of rights by acquiescence (forclusion par tolérance) allows the defendant to plead inadmissibility of an infringement action when the proprietor of the first trademark has tolerated the use of the allegedly infringing trademark with knowledge of such use for five consecutive years (Article L. 716-4-5, 1° IP Code). Extinction through acquiescence only concerns trademarks registered on the national territory on which the action is brought , and only the goods and services for which use has been tolerated. It cannot be claimed if the second trademark was filed in bad faith (Art. L. 716-4-5, 1° IP Code), with the burden of proof on the party claiming such bad faith .

The starting point of the limitation period for extinction of rights by acquiescence is the date on which the plaintiff was made aware of the actual use of the second trademark . The date of mailing of a registered letter with acknowledgment of receipt in which one undertaking informs another of the existence of its earlier trademark cannot be considered as the starting point of the limitation period, since knowledge of the disputed trademark necessarily preceded the mailing of the letter .The period runs until the proprietor of the first trademark issues an instrument suspending the statute of limitations, such as a writ of summons. The fact that the proprietor of the first trademark simply announces that he does not intend to tolerate the existence of the second trademark is not enough to interrupt the limitation period .

Inadmissibility of the infringement action for tolerance of use can only be raised by the defendant if the infringement action is directed against a trademark, and not against a company name (dénomination sociale) . Since the Ordinance of 13 November 2019, only the proprietor of an earlier trademark may have his infringement action dismissed for forfeiture ( Art. L. 716-4-5, 1° IP Code). Previously, the Court of Cassation considered that the preclusion of an infringement action for acquiescence of use could be asserted against the proprietor of any prior right , a remedy that remains applicable in the context of the forfeiture of an action for invalidity (Art. L. 716-2-8 IP Code).

Extinction of rights for acquiescence of use entails establishing that the plaintiff in the infringement action was aware of the use of the allegedly infringing mark  and acquiesced in such use for five years . Acquiescence or tolerance does not imply that the proprietor of the first trademark has accepted, even tacitly, its use, but only that he has refrained, in full knowledge of the facts, from opposing it . Article L. 716-4-5, 1° of the Intellectual Property Code only requires that there be a lack of use, without requiring that it be serious or quantitatively significant  . The mere filing of an application for registration of a trademark is not sufficient to constitute an act allowing the characterization of acquiescence, in the absence of demonstrated use of the second trademark . Moreover, the proprietor of an earlier trademark cannot be deemed to have tolerated such use if he has been deprived of any possibility of opposing it .

The extinction of rights due to acquiescence in use must be proven by the person who seeks to rely on it  . It is a ground for dismissal, and cannot be raised by the proprietor of the second trademark who takes preventive action in the main proceedings. It does not have the effect of depriving the proprietor of the earlier mark of his rights in the latter, but its purpose is to prevent him from bringing an action, with the result that the earlier mark and the second mark continue to coexist .

Ordinance No 2020-306 of 25 March 2020 , which aimed to address the consequences of the circulation of the Covid19 virus established a so-called “legally protected period”  during which any infringement action that would have been subject to forfeiture between 12 March 2020 and 23 June 2020 (Article 1) could nonetheless be brought until two months after the end of the protected period, i.e., until 23 August 2020, without the defendant being able to oppose forfeiture (Article 2). Within and beyond the legally protected period, the lapse of rights occurs on the normal expiry date. Thus, the extension of the limitation period under the ordinance does not apply where the five-year period expired before the protected period came into effect, i.e., before 12 March 2020 .

Cass. com, 2 July 1996, LawLex202100006091JBJ, which specifies that the forfeiture by acquiescence to use, instituted by the Law of 4 January 1991, is not enforceable against an action instituted before the entry into force of that law.

CA Paris, 22 June 2022, LawLex202200004478JBJ.

Cass. com, 31 May 2005, LawLex202200003517JBJ.

CA Paris, 13 April 2022, LawLex202200002857JBJ

Cass. com., 13 November 2013, LawLex202100005805JBJ; CA Paris, 29 January 2021, LawLex202200002856JBJ: for a trademark filed within five years of the publication of the first trademark.

CJEU Case C-482/09 Budejovický Budvar, národní podnik (Budweiser TM), Judgment of 22 September 2011, LawLex201200000080JBJ.

CA Aix-en-Provence, 24 April 2008, LawLex2010000808JBJ.

Ordinance No 2020-306 of 25 March 2020 relating to the extension of rights having lapsed during the Covid crisis and to the adaptation of procedures during the same period.

Circular presenting the provisions of title I of Ordinance No 2020-306 of 25 March 2020 relating to the extension of rights having lapsed during Covid and to the adaptation of procedures during that period.

CA Paris, 13 April 2022,  LawLex202200002857JBJ.

Cass. com, 12 July 2005,  LawLex202200003518JBJ.

CA Paris, 13 April 2022, LawLex202200002857JBJ.

Cass. com, 31 May 2005,  LawLex202200003517JBJ.

Cass. com. 7 January 2014, LawLex202100006141JBJ.

Cass. com, 16 February 2010, LawLex202100006545JBJ: interpretation of the court according to which the proprietor of a prior right other than a registered trademark (a copyright) may find himself barred from bringing an action for invalidity  and prohibition of use of the second registered trademark; CA Paris, 26 May 2017, LawLex2017000009325JBJ, which specifies that forfeiture can be enforced against any proprietor of a prior use.

CA Rennes, 23 March  2010, LawLex202200004300JBJ,  extinction of rights due to acquiescence of use implies establishing that the proprietor of the first trademark had knowledge of the filing of the disputed corporate name as a trademark.

CA Paris, 7 May 2019, LawLex202200002855JBJ.

147. Extinction of rights due to acquiescence