Industrial Property Law

The proprietor of a mark may oppose any use, without consent, in the course of trade, of a sign identical to his or her mark and used for goods or services identical to those for which it is registered (Art. L. 713-2, 1° IP Code). In this case the fact that the signs and the goods or services are the same is presumed to undermine the functions of the mark, in particular those of guaranteeing origi …

Identical sign and identical products or services

The proprietor of a mark may oppose any use, without consent, in the course of trade, of a sign identical to his or her mark and used for goods or services identical to those for which it is registered (Art. L. 713-2, 1° IP Code). In this case the fact that the signs and the goods or services are the same is presumed to undermine the functions of the mark, in particular those of guaranteeing origin or quality .

The identical nature of the signs results from the absence of difference or from the existence of insignificant differences . This is not the case when the contested sign contains differences that are not insignificant for the average consumer , such as modifications, deletions or additions . In the case of a complex mark, identical reproduction implies the reproduction of an essential characteristic element of the mark , while the copying of an element that is not distinctive in itself does not infringe the mark .

The examination of the sameness of the goods or services must be carried out with respect to those designated in the earlier trademark registration , regardless of the conditions under which the product comprising the contested mark is sold . Goods or services may be identical by virtue of their nature, even if they are of different quality, price or purpose . The fact that goods or services belong to the same class has no bearing on their sameness (Art. R. 712-3-1, para. 1, IP Code).

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), Article 16; CA Paris, 2 February 2011, LawLex201100000349JBJ; CA Paris, 31 October 2008, LawLex202200000119JBJ; Cass. com, 20 October 1998, LawLex202100005767JBJ; Cass. com, 16 November 1981, LawLex202200000515JBJ.

CA Paris, 16 February 2007, 06/16225, LawLex202200002198JBJ, which states that in the presence of two identical names, the mere presence of a black frame surrounding the second mark constitutes an insignificant difference that may go unnoticed by the average consumer.

CA Paris, 14 March 2008, LawLex202200001790JBJ; Cass. com. 26 November 2003, LawLex202200000206JBJ, LawLex201000000145JBJ, which decides that in the presence of two “Interplus” signs, the courts should have investigated whether the difference noted in the color of the inscription of the “Plus” element was not insignificant in the eyes of an average consumer of the products concerned; Cass. com, 8 July 2014, LawLex202200002230JBJ; Cass. com. 31 March 2004, LawLex202200000368JBJ.

Cass. com, 26 November 2003, LawLex202200000417JBJ, LawLex202200000206JBJ; Cass. civ, 4 April 2006, LawLex200600001264JBJ; Cass. com, 31 March 2004, LawLex202200000368JBJ.

TGI Paris, 28 September 2005, LawLex200500009924JBJ; Cass. com, 23 November 1993, LawLex202200002507JBJ.

CA Paris, 9 February 2000, LawLex200200000843JBJ; Cass. com, 9 October 1990, LawLex202200002504JBJ.

Cass. com, 3 April 2007, LawLex202100005994JBJ; Cass. com, 12 October 2010, LawLex202200000753JBJ; Cass. com, 18 October 2016, LawLex202200000249JBJ.

Cass. com., 14 January 2003, LawLex200300000615JBJ, which found an infringement even if the item in question was not the subject of a stand-alone sale, as this circumstance is immaterial.

Cass. com, 3 April 2007, LawLex202100005994JBJ, according to which the signs both designate clothing, even if the clothing is different in type, quality or price and destination, such that the sign used by the third party to market the clothing serves to designate identical goods.

Industrial Property Law

96. Identical sign and identical products or services

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

96. Identical sign and identical products or services

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

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise