CABINET CHAILLOT
PATENTS TRADEMARKS DESIGNS
French Patent & Trademark Attorneys - European Patent Attorneys - Representatives before EUIPO
ISO 9001 CERTIFIED
The French Supreme Court recently overturned its case law according to which the mere filing of a trademark application could amount to an infringing act.
In order to comply with developments in case law of the CJEU, which established that the filing of a trademark application is not a use in the course of trade of such trademark, and therefore cannot constitute an infringement, the French Supreme Court ruled in decisions 19-20504 et 19-20959 of 13/10/2021 that the filing of a trademark application cannot constitute an infringement in the absence of use in the course of trade.
Prior decisions of the French Supreme Court ruled that the mere filing could constitute an infringement. Trademark owners therefore used legal actions against competitors, based on the mere filing of a trademark application by such competitors, to deter them from using such trademarks in the course of trade. Such actions could be efficient to prevent the use of the contested trademark, yet often led to no damages when the trademark was not yet used in the course of trade.
The situation is now clearer for trademark owners, also taking into account the recent changes in French trademark law that provide the possibility of cancellation actions directly before the French patent office, where such actions were previously held exclusively before French courts.
When trademark owners wish to cancel a trademark application or registration, they can act before the French trademark office, in an opposition action for a trademark application, in a cancellation action for a trademark registration, and act before competent French Courts for infringement acts resulting from the use of a trademark in the course of trade, to claim damages. A cancellation action and an infrigement actions can be contemplated simultaneously, both to cancel the registration and claim damages for infringing acts.
These decisions make the French case law compliant with the rulings of the CJEU, and show a clear path for trademark owners who wish to act against competitors who file identical or similar trademarks and/or use such trademarks in the course of trade.