Industrial Property Law

In order to be enforceable against third parties, an assignment of trademark rights must be recorded in the national trademark register kept by the INPI (Article L. 714-7, para. 1, IP Code). However, before its registration, it can be relied on against third parties who acquired rights after the date of the assignment and who were aware of the assignment at the time of the acquisition of those rig …

Enforceability

In order to be enforceable against third parties, an assignment of trademark rights must be recorded in the national trademark register kept by the INPI (Article L. 714-7, para. 1, IP Code). However, before its registration, it can be relied on against third parties who acquired rights after the date of the assignment and who were aware of the assignment at the time of the acquisition of those rights ( Art. L. 714-7, para. 2, IP Code).

The registration of the assignment in the National Register of Trademarks is made at the request of one of the parties to the act of assignment or, if he is not a party to the act, of the proprietor of the application on the day of the application for registration (Art. R. 714-4, para. 1, IP Code), and is recorded in the Official Industrial Property Bulletin (Art. R. 714-8, para. 1, IP Code).

As long as the deed of assignment is not published, the assignee cannot act for infringement of the trademark  or renew it  and the assignor remains entitled to act for the protection of his industrial property rights .

Since publication in the National Register of Trademarks is only intended to inform third parties and to make the trademark assignment enforceable against them, this text does not apply to the relationship between the trademark assignee and its co-contractor. A company that is the beneficiary of a trademark sub-license cannot, therefore, rely on the fact that its co-contractor has not registered the trademark assignment from which it has benefited in the National Trademark Register in order to refuse to pay the royalties related to its use .

Cass. com. 17 May 1988, LawLex202200000746JBJ; Cass. com. 29 June 1999 LawLex200200000928JBJ.

Cass. plenary session, 16 July 1992, LawLex202200000382JBJ.

Cass. com. 24 May 1994, LawLex202200000976JBJ.

Cass. com, 3 March 2004, LawLex202200000855JBJ.

Industrial Property Law

126. Enforceability

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

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

126. Enforceability

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