Industrial Property Law

The proprietor of a trademark may not prohibit its use by a third party to designate or refer to goods or services as those of the proprietor of the trademark, in particular where such use is necessary to indicate the intended purpose of a product or service, including as an accessory or spare part (Art. L. 713-6, I, 3° IP Code).
Former article L. 713-6, b) of the Intellectual Property Code limite …

Reference to trademark necessary

The proprietor of a trademark may not prohibit its use by a third party to designate or refer to goods or services as those of the proprietor of the trademark, in particular where such use is necessary to indicate the intended purpose of a product or service, including as an accessory or spare part (Art. L. 713-6, I, 3° IP Code).

Former article L. 713-6, b) of the Intellectual Property Code limited this exception to the exclusive case of the use necessary to indicate the intended purpose of a product or service. The new wording resulting from the Ordinance of 13 November 2019 broadens the scope of the exception, which may include, in particular, the use of the mark in order to draw the attention of consumers to the resale of original products, or for purposes of artistic expression .

This exception is strictly interpreted. When the reference indicates the intended purpose of the product, it must be the only means of providing the public with full and understandable information in order to preserve undistorted competition in the market for that product . This is the case when the reference to a competitor's trademark is the only way for an undertaking to indicate the compatibility of its product with that of the competitor, commonly used in the trade , when the reference provides information that is specifically necessary in the health field by designating the type of dispenser for which a disinfectant is conceived , or where the reference is necessary to identify the place where the services are intended to be offered, especially when these services are related to a characteristic that is attributed to the geographical area in question .

The reference to a trademark may be necessary to indicate the intended purpose of a product or service as an accessory or spare part. The legal classification of a product as an accessory or spare part is a matter for the trial courts to decide. A razor blade which, although removable and sold separately, is manufactured according to a patented technology, attached to the handle by a specific means and cannot be adapted to other razors is a spare part . A disinfectant aerosol is an accessory, in view of the way it is used to be implemented  but not the reconstituted clutch sold as a complete unit, which is considered to be the main product .

Third parties, whether manufacturers or repairers, who use a trademark under the necessary reference exception must ensure that there is no risk of confusion, in the mind of the public, between their activity and that of the trademark proprietor. This requirement, which was expressly included in the former Article L. 713-6, paragraph 1, b) of the Intellectual Property Code, no longer appears in new Article L. 713-6, I, 3°, but is inferred from the requirement of use in accordance with fair trade practices. The report to the French President relating to Ordinance No 2019-1169 of 13 November 2019 emphasizes in effect that the use of a mark likely to create confusion as to the origin of the goods or services may be considered as not in keeping with fair trade practices. The mere reproduction of a trademark without the slightest detail may, for certain products, leave confusion as to their origin, thereby preventing the application of the necessary reference exception .

Directive No 2015/2436 of 16 December 2015, recital 27.

ECJ Case C-228/03 The Gillette Company and Gillette Group Finland Oy, Judgment of 17 March 2005, LawLex200900001296JBJ.

Cass. com., February 10, 2015, LawLex201500000219JBJ: the undertaking wished to demonstrate to wine-growing businesses that its degradable fasteners could be shaped and cut by an electric tying device, a product that it did not manufacture itself.

Cass. com, 5 February 1991, LawLex202200000652JBJ. 

CA Paris, 10 April 2018, LawLex202100005766JBJ, which states that the mark “La Roche Posay” can be used to promote restaurant, hotel and spa services online 

Cass. com., 3 July 2001, LawLex200200000625JBJ.

Cass. com, 5 February 1991, LawLex202200000652JBJ.

Cass. com. 4 January 1985, LawLex202200002443JBJ.

Cass. com., 6 May 1991, LawLex202200000643JBJ.

Industrial Property Law

119. Reference to trademark necessary

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119. Reference to trademark necessary

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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