Industrial Property Law

The proprietor of a mark may only prohibit the use by a third party of a mark identical or similar to his or her own mark if such use occurs in the course of trade , i.e., in the context of a commercial activity for economic gain . In particular, use of a mark in the private domain  or for purely controversial purposes , such as the reproduction, in a comedic manner, of decorative elements of ciga …

Use in the course of trade

The proprietor of a mark may only prohibit the use by a third party of a mark identical or similar to his or her own mark if such use occurs in the course of trade , i.e., in the context of a commercial activity for economic gain . In particular, use of a mark in the private domain  or for purely controversial purposes , such as the reproduction, in a comedic manner, of decorative elements of cigarette packets as part of a general anti-smoking prevention campaign , or to denounce certain corporate practices  or environmental risks , is not in the course of trade, as long as such use does not mislead the public as to the identity of the originators of the message and is clearly not intended to promote the marketing of competing products or services. Nor does the use of a trademark to provide employees with information about their rights, free of charge and without commercial advertising  or the affixing of a car brand to small-scale models sold with a visible label on the packaging for illustrative purposes  or the use of a trademark to promote the sale of a product or service, for satirical purposes of caricaturing, which falls within the scope of freedom of expression, provided that it does not create any risk of confusion between reality and the satirical work  and that its only purpose is to mock or provoke amusement, without any essentially commercial aim on the part of the third party to take advantage of the trademark in order to sell its own product .

The concept of “use” of the mark within the meaning of Articles L. 713-2 and L. 713-3 of the Intellectual Property Code is understood to mean the use of the mark by a third party on its own behalf. The provider of an internet referencing service who hosts the mark and organizes the display of advertisements based on it without using it for his own commercial communications  or the service provider who, on behalf of a third party, fills packaging on which the third party has affixed the mark in question , does not make “use” of it within the meaning of that legislation. On the other hand, use in the course of trade is characterized when the advertiser selects a mark so that an advertising message or result pages to his products or services are displayed with reference to that keyword . Similarly, the operator of an online sales service is likely to be considered as using the sign in the course of trade when, in addition to its own offers for sale, the website incorporates an online marketplace and third-party sellers, without the consent of the trademark proprietor, offer for sale on that marketplace, goods bearing that mark, and a reasonably well-informed and reasonably attentive user of that website establishes a link between the services of that operator and the mark in question. This link can be established by the user when he has the impression that the marketing of the goods is carried out by the operator, in its name and for its own account, in particular by the use of a uniform mode of presentation of the offers published on his website, displaying simultaneously the advertisements relating to the products that it sells in its own name and on its own account and those relating to products offered by third-party sellers on this marketplace, the affixing of its logo of renowned distributor on all these advertisements and the offer to third-party sellers, for the marketing of products bearing the mark in question, of additional services consisting in particular in their storage and shipment . The use by a company on its website of the expression “The alternative to SOS Médecins”  - which identically reproduces the SOS Médecins trademark  - to promote its services, also constitutes use in the course of trade not authorized by the trademark holder  . 

The use of a trademark in the course of trade may be prohibited by its proprietor even if it is carried out in good faith, as this is not sufficient to characterize an infringement . An undertaking cannot therefore rely on the fact that it acted at the behest of one of its customers , or with the tacit authorization of a mere user of the trademark who invokes rights prior to those of its proprietor   to prevent the proprietor from prohibiting infringement.

Art. L. 713-2 and L. 713-3 IP Code, from Article 10 of Directive No 2015/2436.

ECJ Case C-206/01Arsenal Football Club plc, Judgment of 12 November 2002, LawLex200900001111JBJ, : the selection by an advertiser of a sign identical to another's trademark as a keyword intended to trigger the display of its advertising message constitutes a use of that sign in the course of trade, and not and not as a private matter.

CA Paris, 9 September 1998, LawLex200200001095JBJ.

Cass. com, 13 July 2010, LawLex201000000864JBJ; Cass. com, 20 January 2015, LawLex201500000092JBJ.

ECJ Case  C-119/10 Frisdranken Industrie Winters BV, Judgment of 15 December 2011, LawLex201200000627JBJ.

CA Paris, 2 February 2011, LawLex201100000349JBJ; Cass. com, 29 September 2015, LawLex202200002229JBJ.

CJEU Case C-148/21 Christian Louboutin, Judgment of 22 December 2022, .

CA Paris, 15 March 2024, LawLex202400002566JBJ.

CA Paris, 8 November 2000, LawLex200300002506JBJ. 

CA Douai, 26 April 1999, LawLex200200000957JBJ. 

Cass. com, 4 July 1966, LawLex202200001867JBJ.

CA Paris, 2 February 2011,  LawLex201100000349JBJ.

CA Paris, 30 April 2003, LawLex200300002734JBJ.

Cass. civ, 19 October 2006, LawLex200600002195JBJ.

CA Paris, 30 April 2003, LawLex200300002734JBJ, which concerns the sign “jeboycottedanone” (I'mboycottingDanone)

CA Paris, 17 November 2006, LawLex200700000186JBJ, on the reproduction of the stylized letter A and the name Areva, associated with a skull and crossbones and the slogan “stop plutonium - l'arrêt va de soi” ("stopping [plutonium] is self-evident"), placing the letter A on the body of a “dead” or “sick” fish.

Cass. com. 10 May 2011, LawLex202200000214JBJ.

Cass. crim, 24 September 2014, LawLex202200002228JBJ.

Cass. plenary session, 12 July 2000, LawLex200200000750JBJ.

Industrial Property Law

95. Use in the course of trade

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

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

95. Use in the course of trade

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