Industrial Property Law

In order to assert a claim to a trademark, a person cannot plead the deceptive nature of its registration . Furthermore, a mark cannot be claimed if it consists of a term that must be left available to all, including any potential competitor . The registrations of the terms “522 Davis” and “2056” which are, at the date of the filing of the trademarks, references commonly used in scientific and pro …

Limits to the claim

In order to assert a claim to a trademark, a person cannot plead the deceptive nature of its registration . Furthermore, a mark cannot be claimed if it consists of a term that must be left available to all, including any potential competitor . The registrations of the terms “522 Davis” and “2056” which are, at the date of the filing of the trademarks, references commonly used in scientific and professional circles, are void. On the other hand, the registration of the expression “Allez les Bleus” is not fraudulent since, at the date of its registration, it was not commonly used in the field of soccer and only became common after the 1998 World Cup .

Even when a claim action is possible, the claimant may choose to bring an action for nullity. The question had arisen insofar as, prior to the reform introduced by the Ordinance of 13 November 2019, the concept of fraud as such was not included among the grounds for an action in nullity. However, the courts had upheld invalidity actions in cases of misuse of trademark law , or deprivation of a mark necessary for the applicant's business , and ruled that while the Intellectual Property Code envisions fraud in the context of an action to assert a right of ownership without defining it as such, the fraudulent registration of a trademark may be invalidated by virtue of the adage fraus omnia corrumpit (fraud corrupts all) . Article L. 711-2, 11° of the Intellectual Property Code now expressly cites bad faith as a basis for an action for absolute nullity.

CA Paris, 30 March 2018, LawLex202200000029JBJ.

Cass. com, 1 June 1999, LawLex202100005350JBJ.

Cass. com, 17 January 2006, LawLex200600000285JBJ.

Cass. com, 19 October 1999, LawLex202100006552JBJ.

Cass. com, 23 October 2012, LawLex202200000006JBJ; CA Paris, 17 September 2021, LawLex202100005772JBJ.

CA Paris, 17 September 2021, LawLex202100005772JBJ.

Industrial Property Law

90. Limits to the claim

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Les notions juridiques connexes

90. Limits to the claim

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