Industrial Property Law

Civil actions for infringement are governed by both the ordinary rules of civil procedure and the special rules relating to intellectual property law. In accordance with Article 31 of the Code of Civil Procedure, the plaintiff in the infringement action must have an interest in bringing proceedings (standing). An applicant who has registered a trademark on behalf of a company in formation and then …

Rightholder

Civil actions for infringement are governed by both the ordinary rules of civil procedure and the special rules relating to intellectual property law. In accordance with Article 31 of the Code of Civil Procedure, the plaintiff in the infringement action must have an interest in bringing proceedings (standing). An applicant who has registered a trademark on behalf of a company in formation and then decided to use it on an individual basis has such an interest as long as the company in formation has not been incorporated and has not taken over the undertakings he has given .

In addition to the standing required by Article 31 of the Code of Civil Procedure, the plaintiff in the infringement action must have rights in the trademark under the conditions established by Article L. 716-4-2 of the Intellectual Property Code, which provides in paragraph 1 that infringement actions may be initiated by the trademark proprietor. The following are eligible to bring an action: the co-owner of a trademark, without the prior agreement of the other co-owners, for the goods or services that concern him or her , the transferee of a trademark as soon as the transfer is recorded in the National Trademark Register, which makes it enforceable against third parties , the company that produces or distributes the goods marketed under the trademark , or the business whose name appears on the packaging and instructions for the goods and which is therefore responsible for their marketing, even if the sales are implemented by a subsidiary . The lack of any reference in the National Trademark Register to changes in the proprietor's address and name  or the omission of certain products from the publication of the renewal of the trademark  have no impact on standing to bring an infringement action. Finally, a former proprietor of a trademark who has not renewed it remains entitled to sue for the facts prior to its non-renewal .

In contrast, the applicant may not bring an infringement action until such time as his mark is registered as facts prior to the publication of the trademark are not considered to have infringed the rights attached to it (Art. L. 716-4-1 IP Code). In such cases, it is not the capacity of the applicant that is at issue but the fact that no infringement exists, which makes any enforcement impossible . However, when a copy of the application for registration is notified to the alleged infringer, the facts subsequent to the application may be ascertained and prosecuted, with the court before which the matter is brought staying its proceedings until the registration is published (Art. L. 716-4-1, para. 2, IP Code).

As of the Ordinance of 13 November 2019, a civil action for trademark infringement may be brought by the licensee of the trademark with the consent of the proprietor, unless otherwise specified in the license agreement . The beneficiary of an exclusive right may bring an infringement action without the consent of the trademark proprietor if, after formal notice, the proprietor does not exercise that right within a reasonable period of time (Art. L. 716-4-2, para. 1, IP Code). When a party to a licensing agreement initiates infringement proceedings, any party to the licensing agreement is entitled to intervene in the proceedings in order to obtain compensation for its own damages (Art. L. 716-4-2, para. 4, IP Code).

The Ordinance of 13 November 2019 also introduced specific rules for collective or guarantee marks. Henceforth, the person entitled to use that mark may initiate an infringement action without the proprietor's authorization, unless otherwise stated in the rules of use (Art. L. 716-4-2, para. 2, IP Code). It may also intervene in infringement proceedings committed by the rightholder in order to obtain compensation for its own injury (Art. L. 716-4-2, para. 5, IP Code). Finally, the proprietor of a guarantee mark or a collective mark may seek, on behalf of the persons entitled to use the mark, compensation for the harm suffered by them as a result of the unauthorized use of the mark (Art. L. 716-4-2, paragraph 3, IP Code).

Cass. com., 14 October 2020, LawLex202000002525JBJ.

CA Poitiers, 30 January 2001, LawLex200200000671JBJ: in this case, two undertakings are joint owners of a trademark, each one for the products pertaining to it. 

CA Aix-en-Provence, 24 April 2008, LawLex2010000808JBJ; Cass. com. 17 May 1988, LawLex202200000746JBJ1; CA Paris, 16 May 2017, LawLex201700000905JBJ.

CA Paris, 22 February 2022, LawLex202200002555JBJ.

CA Paris, 26 October 2018, LawLex201800001621JBJ.

Cass. com, 11 March 2003, LawLex202100006523JBJ.

Cass. com, 3 October  1995,  LawLex202200001963JBJ

Cass. com, 2 June 1992, LawLex202200003515JBJ.

CA Colmar, 13 May 1994,  LawLex200200001572JBJ.

For an illustration, See CA Paris, 22 April 2022, LawLex202200004161JBJ.

Industrial Property Law

143. Rightholder

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143. Rightholder

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