Industrial Property Law

The transfer of a trademark must be in writing  failing which it is void ( Article L. 714-1, para. 7, IP Code). The invalidity of a trademark assignment for lack of a written document constitutes an absolute nullity, which may be invoked by the parties to the transfer agreement or by third parties 

The ordinary law of contracts, and more particularly of contracts for sale, applies to trademark transfer agreements. The validity of the contract requires the consent of the parties, their capacity to contract, a lawful and certain content (Art. 1128 Civil Code), and the identification of the thing and the price (Art. 1583 Civil Code).

If the transfer relates to a mark that has been filed but not registered, the rejection of the application for registration by the INPI leads to the nullity of the transfer agreement. The agreement is also null and void if it relates to signs or goods or services not covered by the mark  or, in the event that it does not contain lawful and defined content, if the mark to which it relates is cancelled.

The acquisition of a mark in bad faith  for instance to prevent a competitor from continuing to use the sign that constitutes the trademark is a cause of invalidity of the contract . On the other hand, the mere fact of acquiring a trademark in order to avoid possible infringement proceedings on the part of the assigning undertaking  is not fraudulent. The transfer of a national trademark does not necessarily require, in order to be valid, the concurrent transfer of the trademark for the other Member States .

CA Aix-en-Provence, 17 October 2019, LawLex202200002858JBJ.

Cass. com. 7 April 1992, LawLex202200000860JB; Cass. com., 25 January 2005, LawLex202200002843JBJ.

Cass. com. 3 March 1987,  LawLex202200000853JBJ.

CA Versailles, 11 May 1995, LawLex200200001455JBJ.

ECJ Case C-9/93 IHT Internationale Heiztechnik GmbH and Uwe Danzinger, Judgment of 22 June 1994, LawLex200500005054JBJ.

124. Conditions for validity