Industrial Property Law

The proprietor, who has a right in rem in the form of real property may freely dispose of his trademark, and in particular assign or license all or part of his trademark right to a third party, transfer it to a company, grant a creditor a right in rem in his trademark in order to secure a debt (Article L. 714-1 IP Code), or enter into a coexistence agreement with the proprietor of an identical or  …

Exploitation and transfer of the trademark

The proprietor, who has a right in rem in the form of real property may freely dispose of his trademark, and in particular assign or license all or part of his trademark right to a third party, transfer it to a company, grant a creditor a right in rem in his trademark in order to secure a debt (Article L. 714-1 IP Code), or enter into a coexistence agreement with the proprietor of an identical or similar trademark covering the same or similar products . He may also apply to the court for injunctive relief to enforce his trademark rights (Art. L. 714-1, para. 6, IP Code).

However, the use of a trademark, which is likely to create restrictions on the free movement of goods  may not have the object or effect of distorting competition. In effect, while the existence of the exclusive right to the trademark cannot be called into question, the conditions under which it is exercised may be declared contrary to competition law when the exclusive right constitutes the means, object or consequence of a restrictive agreement . The exclusive right may also give rise to an abuse of a dominant position because of the exclusivity it confers. However, the Court of Cassation has held that the French national railway operator (SNCF) which has a monopoly on the operation of the network and an absolute right to the Orient Express trademark, is not abusing its dominant position, nor is it undermining the principle of the free movement of goods insofar as it is merely exercising a legitimate right attached to the trademark by temporarily transferring the use of the trademark in return for a fee .

Cass. com, 31 March 2009, LawLex202200002849JBJ.

ECJ Case 40/70 Sirena Srl, Judgment of 18 February 1971, LawLex200400002879JBJ.

ECJ Case 86/75 EMI Records Limited, Judgment of 15 June 1976, LawLex200400002898JBJ.

Cass. com, 4 July 1995,, LawLex200200001439JBJ.

Industrial Property Law

122. Exploitation and transfer of the trademark

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122. Exploitation and transfer of the trademark

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Les décisions de justice citées dans ce paragraphe :

Sous parties

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise