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The acts of infringement of a French trademark

In order to determine the infringement of a mark (or the validity of a mark with respect to a prior mark), it is necessary :

- to compare both marks ; and

- to compare the goods and/or services to which the marks are applied.

In the case of an infringement, it is also necessary to examine whether there has been an act of infringement.

The acts of infringement are listed in Articles L. 713-2 and L.713-3 of the Industrial Property Code :

1 - The reproduction or the imitation

It is not researched here whether the infringed sign has been put on marketed products ; it is sufficient that the mark has been reproduced, and that its use in relation to goods and/or services identical or similar with those of the registration is possible.

2 - The use

The definition of this term is very broad. For example, are considered as an illicit use of the mark :

- the filing of a trademark application.

The mere filing is considered as an act of infringement. As a rule, the damages for such an act amount to at least 10 000 Eur.

- the use as a company name, as a signboard, ...

However, it is possible for a person in good faith to use his own surname.

- the precarious possession, the sale, the offer to sale..

The good faith does not preclude the infringement

3 - The affixin

The affixing of an authentic mark on a product not deriving from the titular of the mark is prohibited. This case includes the use of a container (bottle, packing), the form of which is protected by a mark, in order to contain non authentic products (often of a lower quality).

4 - The removal or the alteration

The removal or the alteration of a mark which has been regularly affixed is an act of infringement.

The exception : free movement of goods.

If the importation and the exportation are in fact acts of infringement, the right of the proprietor of a mark is restricted by Article L. 713-4 of the Intellectual Property Code, according to which he cannot prohibit the use of the mark in relation to goods which have been put on the market in the European Economic Community by himself or with his consent. For instance, the owner of a French mark who has sold his marked products in Italy shall not be able to prevent the return of these products in France.