Non-use and genuine use of a trademark : 
what are the proper reasons ?

Court of appeal, May 17th 2019, Sas Affaires à faire c/ Sarl Chloelina

In the context of an invalidation action for non-use brought in front of the French courts, the owner of the contested trademark had tried to shrink from its legal obligation to prove the genuine use of his trademark by invoking unfair competition proceedings in progress. According to the holder, these current proceedings were preventing him to make a use of his sign and business name complying with his trademark.

 

In this extent, the court of appeal recalled, according to a constant jurisprudence, that three conditions must be met for that the obstacle to a trademark’s exploitation to constitute a proper reason in respect to the article L. 714-5 of the French Code of Intellectual Property :

 

  • The obstacle had to be in direct relationship with the trademark ;
  • It must be independent from the owner’s will ;
  • It must make the use of the trademark impossible or unreasonable.

 

In this case, it had been deemed that the unfair competition proceeding did not constitute a “proper reason”, for the above-mentioned current proceeding did not targeted the contested trademark (no direct relationships). Thus, this proceeding did not make the trademark’s use “impossible or unreasonable”.

 

Opinion of LAVOIX 

 

This decision seems to have been taken in spite of good sense, even if it respected stricto sensu the conditions related to proper reasons. Indeed, as the mentioned sign and business name targeted by the unfair competition proceeding are identical to a trademark, it could be understandable that the owner decided to cease all exploitation in order to prevent himself from an infringement action, or from a worsening of the unfair competition proceeding.

 

It should be noted that this decision may be contested in front of the court of cassation.

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