Industrial Property Law

The Ordinance of 13 November 2019 incorporated external transit (Article L. 713-3-2 IP Code), preparatory acts (Article L. 713-3-3 IP Code) and the use of the mark in a dictionary (Article L. 713-3-4 IP Code) into the Intellectual Property Code as cases of prohibited use. 
1) External transit.
Article L. 713-3-2  refers to the case where goods coming from a country outside the EU and bearing a mar …

Other prohibited uses

The Ordinance of 13 November 2019 incorporated external transit (Article L. 713-3-2 IP Code), preparatory acts (Article L. 713-3-3 IP Code) and the use of the mark in a dictionary (Article L. 713-3-4 IP Code) into the Intellectual Property Code as cases of prohibited use. 

Article L. 713-3-2  refers to the case where goods coming from a country outside the EU and bearing a mark identical to the mark, or which cannot be distinguished from it in its essential aspects, are brought into the national territory without being released into free circulation. Such an act is prohibited without the authorization of the proprietor of the trademark in question. Unlike the prohibition on importing goods under an infringing mark, the prohibition applies outside of any use of the mark in the course of trade.

Article L. 713-3-2 of the Intellectual Property Code, as amended by the Ordinance of 13 November 2019, transposes the provisions of Article 10(4) of Directive No 2015/2436. Previously, the Court of Justice ruled that goods coming from a non-EU state could not be classified as infringing goods merely because they were brought into the European customs territory under a suspensive procedure. The trademark proprietor could only oppose such use by demonstrating that the goods were intended for sale in a Member State where their marketing was prohibited. In the absence of such a demonstration, the Court of Justice did not allow the customs authorities to detain the goods in transit . Article 10(4) of Directive No 2015/2436, which reinstated this provision  nevertheless specifies that any action committed on the basis of this article is inadmissible if, in the course of the procedure to determine whether the registered trademark has been infringed, the declarant or holder of the goods provides evidence that the proprietor of the registered trademark does not have the right to prohibit the placing on the market of the goods in the country of final destination. The Ordinance of 13 November 2019 transposed this provision into Article L. 716-4-4 of the Intellectual Property Code.

Where there is a risk of infringement of a trademark under Articles L. 713-2 to L. 713-3-1 of the IP Code, the proprietor may prohibit the affixing of a sign that is identical or similar to the trademark on packaging, labels, tags, security or authenticity devices or on any other means to which the mark can be affixed (Article L. 713-3-3, 1° IP Code). It may also prohibit the offering, placing on the market or possession for these purposes, and the import or export of such means (Art. L. 713-3-3, 2° IP Code).

If a dictionary, encyclopedia or similar reference work reproduces a trademark and gives the impression that it is the generic name for the goods or services for which it is registered, the proprietor may request that the publisher indicate that it is a registered trademark. This option, is available whether the work is in printed or electronic form ( Art. L. 713-3-4 IP Code). This basis, which is not specified in Article L. 716-4 of the Intellectual Property Code relating to acts of infringement, does not allow the proprietor to initiate such an action, but only an action in civil liability under ordinary civil law.

CJEU Joined Case C-446/09 and C-495/09 Röhlig Belgium NV (Sté), Judgment of 1 December 2011, LawLex202300006050JBJ.

Report to the President of the Republic on Ordinance No 2019/1169 of 13 November 2019 on trademarks and service marks, OJ 0264 of 14 November 2019: “Article L. 713-3-2 breaks with the Nokia and Philips case law (CJEU, 1 December 2011, C-446/09 and C-495/09) by reinstating the possibility for customs authorities to detain goods in transit suspected of infringement without the need for the trademark proprietor to prove that they are destined for a State where they are prohibited from being marketed.”

Industrial Property Law

110. Other prohibited uses

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

110. Other prohibited uses

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise