Industrial Property Law

The proprietor of a prior right may not seek the invalidity of a subsequent trademark on the basis of prior use if he has tolerated its use for a period of five consecutive years, unless the registration of the trademark was applied for in bad faith (Art. L. 716-2-8 IP Code) . The forfeiture for acquiescence (tolerance of use) can be enforced against any proprietor of prior rights , even if the pr …

Forfeiture due to acquiescence

The proprietor of a prior right may not seek the invalidity of a subsequent trademark on the basis of prior use if he has tolerated its use for a period of five consecutive years, unless the registration of the trademark was applied for in bad faith (Art. L. 716-2-8 IP Code) . The forfeiture for acquiescence (tolerance of use) can be enforced against any proprietor of prior rights , even if the proprietor acts on the basis of civil liability for infringement of his well-known or reputed trademark . This is not a sanction for not taking action for infringement, but rather for knowingly tolerating the use of the second trademark .

The proprietor of the second trademark who claims the forfeiture of rights for acquiescence must demonstrate honest and continuous use of the trademark for more than five years, which cannot be inferred from its registration alone, as well as from the prior right owner's knowledge of it .

The five-year time-limit for the claim of acquiescence begins to run from the date on which the proprietor of the earlier trademark acquires actual knowledge of the use of the later trademark  and has the possibility of not tolerating it and of opposing it . This knowledge is not established by the mere filing of the second trademark , the publication of this filing  or the date of the grant of the title  or the publication of the registration of the second trademark in the Official Bulletin of Industrial Property . Proof of such knowledge may result from general industry knowledge of the use of the later trademark, which may be inferred from the length of time it has been used . However, the fact that the earlier trademark constitutes an international trademark is not sufficient to establish that its proprietor necessarily had knowledge of the existence and use of the second trademark, where the product sector concerned is not a niche sector in which undertakings constantly monitor competing trademarks and where the company using the contested trademark does not otherwise enjoy any reputation on the French market . The limitation period for bringing an action for invalidity (nullité) is not interrupted by an interim precautionary measure or an act of enforcement . 

The negligence of the proprietor of the second trademark who refrains from performing a prior art search , or the mere fact that he knew of the earlier trademark  does not characterize bad faith at the time of filing that could prevent filing of the action for forfeiture due to acquiescence.

See e.g. CA Aix-en-Provence, 24 April 2008, LawLex201000000808JBJ; Cass. com, 19 November 2002, LawLex202200007823JBJ: the limitation period of five years for the invalidity action provided for by the Law of 4 January 1991, which came into force on 28 December 1991, can only have effect for the future, so that it could not begin to run before the entry into force of this law. 

Cass. com, 6 January 2015, LawLex202200000389JBJ, which sets aside the principle of speciality; Cass. com, 16 February 2010, LawLex202100006545JBJ, for an action based on a copyright.

Cass. com, 15 June 2010, LawLex201000000755JBJ.

Cass. com., 5 June 2024, LawLex202400004099JBJ.

CA Paris, 2 October 2024, LawLex202400007518JBJ.

Cass. com, 25 February 2003, LawLex202200000528JBJ.

Cass. com, 10 May 2006, LawLex202200007819JBJ.

Cass. com, 6 January 2015, LawLex202200000389JBJ.

Cass. com. of 6 January 2015, LawLex202200000389JBJ.

Cass. com. 28 March 2006, LawLex202200000531JBJ.

Cass. com, 6 April 2022, LawLex202200002061JBJ.

Cass. com, 11 February 2003, LawLex200300002731JBJ; CA Paris, 17 November 2017, LawLex202200000537JBJ.

CA Paris, 14 January 2022, LawLex202200001521JBJ .

Cass. com, 28 March 2006, LawLex202200000531JBJ.

CA Paris, 17 November 2017, LawLex202200000537JBJ.

CA Paris, 14 January 2022, LawLex202200001521JBJ; CA Paris, 17 November 2017, LawLex202200000537JBJ.

Industrial Property Law

203. Forfeiture due to acquiescence

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203. Forfeiture due to acquiescence

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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