Industrial Property Law

Article L. 713-6 of the Intellectual Property Code provides for exceptions to the rights conferred on the proprietor by the trademark. The proprietor may not prohibit the use, in the course of trade, in accordance with fair trade practices :

- of the family name or address of a third party natural person ( Art. L. 713-6, I, 1° CPI) ;

- of signs or indications that are not distinctive or that relate to the type, quality, quantity, intended purpose, value, geographical origin, time of production of the product or provision of the service or to other characteristics of the product or service (Art. L. 713-6, I, 2° CPI);

- of its trademark to designate or to identify goods or services as its own, in particular when such use is necessary to indicate the destination of the goods or services, notably as an accessory or spare part ( Art. L. 713-6, I, 3° CPI).

The trademark proprietor may also not prohibit a third party from using, in the course of business, a trade name, sign or domain name, which is local in scope, where such use predates the date of the application for registration of the trademark and is exercised within the limits of the territory in which they are recognized ( Art. L. 713-6, II IP Code).

The Ordinance of 13 November 2019, amending Article L. 713-6 of the Intellectual Property Code, removed, inter alia, two exceptions to the proprietor's rights in his or her mark:

- the right of a third party acting in good faith to use his patronymic name as a corporate name, trade name or sign ( former Art. L. 713-6, a) IP Code) ;

- the use of a sign which is identical or similar to the trademark of the proprietor as a geographical indication protecting industrial and artisanal products [IGPIA] ( former Art. L. 713-6, c) IP Code).

Nevertheless, a third party may oppose the proprietor of the registered mark seeking to prohibit the use of the sign in question on the grounds that it has, where such is the case, a priority use for the family name ( Article L. 711-3, I, 8° IP Code) or the geographical indication (Article L. 711-3, I, 5° IP Code).

The ordinance also eliminated the right of a trademark owner, under former Article L. 713-6, paragraph 2 of the Intellectual Property Code, to request that the court limit or prohibit a use covered by an exception if that use infringes its rights.

116. Exceptions to the exclusive right