Industrial Property Law

As an exception to the rights conferred by the trademark, the proprietor may not prohibit an individual third party from using his or her own family name or address in the course of trade, where such use is made in accordance with the usual practices of the trade ( Article L. 713-6, I, 1° IP Code). This exception applies only to the use by a third party of his/her family name, to the exclusion fir …

Family name (patronym) or address

As an exception to the rights conferred by the trademark, the proprietor may not prohibit an individual third party from using his or her own family name or address in the course of trade, where such use is made in accordance with the usual practices of the trade ( Article L. 713-6, I, 1° IP Code). This exception applies only to the use by a third party of his/her family name, to the exclusion first names or  pseudonyms.

The exception allows a trademark to coexist with a commercial use of an identical surname as long as this use is made in accordance with fair trade practices. The proprietor of a patronymic can thus register it as a trademark, even if the name is already registered, provided that a distinctive element is added to it so as to avoid the likelihood of confusion .

Only natural persons may benefit from the exception relating to the use of their patronymic name or address in the course of trade, which includes natural persons who are merchants or craftsmen, but excludes legal entities. Prior to the introduction of this clarification by the Ordinance of 13 November 2019, case law held that a legal person could avail itself of the use of a patronymic provided that such use was free from fraud, i.e. that the proprietor of the name had genuine functions of control and management in the business . This condition was intended to prevent “nominee” agreements, whereby a person would join a company for the sole purpose of allowing it to use his or her surname . Legal entities are also not entitled to use their address to claim the exception under Article L. 713-6 of the Intellectual Property Code, which is a departure from previous case law .

In order to benefit from the exception, the use of the surname must be in conformity with the fair practices of the trade, i.e., honest practices in industrial or commercial matters with respect to the legitimate interests of the proprietor of the trademark . The notion of fair use is similar to that of good faith, which was found in former Article L. 713-6, paragraph 1, a) of the Intellectual Property Code, according to which the proprietor of the trademark may only prohibit or limit the use of his/her name by a third party if the latter has committed an act of infringement of the trademark or if there are serious reasons to believe that he/she is about to do so , the well-known status of a trademark consisting of a patronymic not necessarily precluding the existence of good faith .

If the conditions of the exception are not met, a court may order a ban on the use of the family name, but it must define the scope of the ban, which cannot be general .

Cass. com., 2 May 1984, LawLex202200000571JBJ; Cass. com. 23 November 1977, LawLex202200000634JBJ; CA Paris, 4 July 2001, LawLex202100005746JBJ.

Cass. com. 21 June 2011, LawLex202100005338JBJ; CA Paris, July 4, 2001, LawLex202100005746JBJ.

Cass. com, 17 March 2021, LawLex202100005752JBJ.

Cass. com. 17 May 1982, LawLex202100006549JBJ, which authorizes an undertaking having its registered office in the city of Baccarat to use this mark as an address on labels and commercial documentation as long as it does not intend to harm the proprietor of the mark and does not use the name as a trademark element.

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

Cass. com. 13 October 2021, LawLex202100005622JBJ.

Cass. com. 17 March 2021,  LawLex202100005752JBJ.

Cass. com, 13 November 2013, LawLex201300001599JBJ.

Industrial Property Law

117. Family name (patronym) or address

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117. Family name (patronym) or address

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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