Court of Cassation: filing a trademark application does not constitute trademark infringement

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In two recent judgments, the French Court of Cassation ruled that “the application for registration of a sign as a trademark does not constitute an act of counterfeiting”. The ruling is in line with recent case law from the Court of Justice of the European Union (CJEU), but time will tell if the ruling will lead to more harmful trademark applications being filed.

Until recent decisions, the courts were divided on this issue, some still considering that a simple application for registration constitutes an act of infringement, regardless of the use of the mark in question. The Paris Court of Appeal had pointed out in a 2016 decision that by filing a trademark, the applicant was seeking to obtain an economic advantage in the context of its commercial activity and that this act alone constituted use of the sign in the business life (RG n° 15/08997). The French Court of Cassation has also ruled that the commercial use of an infringing mark is not necessary to establish an act of infringement. He regularly judged that “the infringement of the private right constituted by the ownership of a mark alone justifies the award of damages, regardless of the good faith of the infringer or the lack of use in the course of business of the counterfeited mark “.

Two judgments – one result

The first case was brought by the manufacturer of coffee machines, Malongo, owner of the word mark “XPOD” registered since 2005 for products relating to coffee machines. In 2014, Technopool registered the “ZPOD” brand for identical products, and its subsidiary Facotec considered marketing coffee machines under the brand. Malongo sued its competitors for cancellation of the registration of the ZPOD trademark and for infringement of its XPOD trademark.

The Paris Court of Appeal canceled the registration of the “ZPOD” trademark in 2019, considering that there was a risk of confusion with the earlier trademark XPOD. However, the court dismissed Malongo’s infringement action, finding that the “ZPOD” trademark had not been used in business before its cancellation. The court held that “The filing of a canceled mark, deemed non-existent, cannot in itself constitute an act of counterfeiting.

Malongo filed an appeal before the Court of Cassation, arguing that a trademark registration, even without use of said trademark, constitutes an act of infringement.

The second decision follows a request filed by Wolfberger which, in 2012, acquired the assets of Domaine Lucien Albrecht, including the brands “LUCIEN ALBRECHT” and “WEID” designating wines and sparkling wines from Alsace. The Albrecht family, former owner of Domaine Lucien Albrecht, filed several trademarks after the transfer of ownership, including “JEAN ALBRECHT”, “LE WEID DE JEAN ALBRECHT” and “FAMILLE ALBRECHT”, to designate identical products. The French Trademark Office, INPI, refused to register these signs as trademarks, but Wolfberger nevertheless sued the Albrecht family for trademark infringement.

In July 2019, the Colmar Court of Appeal dismissed Wolfberger’s infringement claims. An appeal has been filed with the French Court of Cassation.

In both cases, the French Court of Cassation ruled that an application for registration of a sign as a trademark does not constitute an act of infringement when such an application, even if granted, does not characterize use for products or services in the absence of any marketing of goods or services under the sign. The French Court of Cassation added that “Similarly, in such a case, no risk of confusion in the mind of the public and, consequently, no infringement of the essential function of the indication of origin of the mark, are likely to occur”.

A clarification of French case law to align with the judgments of the CJEU

The French Court of Cassation justified its decisions by referring specifically to the Daimler judgment of the Court of Justice of the EU and indicating that the position of the French Court of Cassation should be revised in the light of European case law. The case can be compared to a recent decision by the UK High Court (IPEC) which ruled that filing a trademark application can constitute marketing fraud.

The future will tell us if this judgment generates an increasing number of trademarks simply filed as a nuisance, in the absence of the deterrent effect of a possible action for infringement.

References: Court of Cassation, Commercial Chamber, October 13, 2021, n° 19-20.504 and 19-20.959.

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