Trademark registration confers on its owner a right of ownership over this trademark for the goods or services covered by it (article L.713-1 of the French Intellectual Property Code – IP Code), which notably includes the right to prohibit its use in the course of trade.
Nevertheless, this right may be limited in some cases provided for by law, namely when the use of the trademark is necessary to indicate the intended purpose of a product or service, in as an accessory or spare part (article L.713-6 of the IP Code) and when the trademark is used in comparative advertising, as long as such advertising is not carried out in violation of articles L.122-1 to L.122- 7 of the Consumer Code (article L.713-3-1 of the IP Code).
These limitations only apply in accordance with honest practices in industrial and commercial matters.
- Necessary use of another’s trademark (article L.713-6 of the IP Code )
With regard to the necessary use of the trademark to specify the intended purpose of a product or service, the Paris Court of Appeal ruled on October 9, 2020 (FREE / BFM TV and SAS RMC DECOUVERTE) that “this necessary use of the trademark must be done in accordance with honest practices in industrial and commercial matters, that is, according to the CJEU’s case law, when such use represents in practice the only means of providing the public with comprehensive and complete information on that purpose in order to preserve the system of undistorted competition on the market for that product or service ».
In the following cases, some of which predated the above-mentioned decision, were considered as authorized uses of a trademark:
- The use of the ROLEX trademark for the repair and sale of authentic watches is lawful [but the registration and use of domain names containing the ROLEX trademark to allow access to the watches sale and repair commercial site infringes this trademark] (TGI of Paris, April 5, 2018).
- The use of the SOLO trademark (protected for industrial furnaces) by RD TECHNOLOGIES company “to expressly designate products it markets and which are intended to be adapted to industrial furnaces designed and manufactured by SOLO SWISS company, when this is the only way to provide the public concerned – particularly the users of industrial furnaces – with comprehensive and complete information on the product concerned, its intended purpose and its compatibility with the goods covered by the trademark at issue”, RD TECHNOLOGIE company also affixed “its own name to the products, which excludes any likelihood of confusion in the consumer’s mind” (Paris Court of Appeal, ruling of October 28, 2022).
On the other hand, the following are considered counterfeit :
- The use of the MICHELIN trademark and its logo by a restaurant reservation website as the trademark and logo were used numerous times on the website without any justification (Paris Court of Appeal, April 2, 2019).
- The scanning and display of CAMARD company’s catalogs on a website and reproduction of its CAMARD trademark as consumers may believe that the website owner is acting with the CAMARD company’s authorization (Paris Court of Appeal, October 1, 2019).
- Use of another’s trademark in a comparative advertisement (article L.713-3-1 of the IP Code).
Article L713-3-1, 6° of the IP Code prohibits the use of another’s trademarks in comparative advertising in violation of articles L. 122-1 to L. 122-7 of the French Consumer Code.
The Court of Justice of the European Union (CJEU) has confirmed that the owner of a registered trademark is not entitled to prohibit the use, by a third party, in lawful comparative advertising of a sign identical or similar to his trademark (HOLDINGS LTD v HUTCHINSON 3G LTD (C-533/06), 12/06/2008).
However, the trademark owner can prohibit the use of his trademark if the advertising does not comply with all the stated conditions of lawfulness, even where there is no confusion, as long as such use is likely to affect one of the other functions of the trademark (CJEU ruling of 18/06/2009 (L’Oréal v. Bellure (C-487/07)).
a. Unlawfulness of comparative advertising
This first condition is required to prohibit the use of a trademark in comparative advertising.
The conditions governing the lawfulness of comparative advertising are set out in Articles L122-1 and L122-2 of the French Consumer Code (reproducing those set out in Article 4 of Directive 2006/114/EC): comparative advertising must be (i) not misleading, (ii) relate to goods or services meeting the same needs or intended for the same purpose, (iii) objectively compare one or more material, relevant, verifiable and representative features of those goods or services, which may include price; it may not (iv) take unfair advantage of the reputation of a trademark . …/… of a competitor, (v) discredit or denigrate the …/… trademarks of a competitor, (vi) create confusion between the advertiser and a competitor or between the trademarks…/… of the advertiser and those of a competitor, (vi) present goods or services as an imitation or reproduction of a good or service protected by a trademark or a trade name.
Therefore, comparative advertising focused on secondary and non-representative features of the goods, or which ignores unfavorable characteristics, or which focuses on unverifiable or truncated features, will be considered unlawful.
b. Infringement of one of the other functions of the trademark
The second condition for prohibiting the use of a trademark in comparative advertising is, according to the above-mentioned case law, that such use is likely to affect one of the other functions of the trademark (other than indicating the function of origin, which may be affected by a likelihood of confusion).
The other functions of the trademark are identified by case law, in particular in the CJEU’s Bellure decision of June 18, 2009 (CJEU, C-487/07 June 18, 2009, Bellure, § 58): “These functions include not only the essential function of the trademark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services, or those of communication, investment or advertising.
Previously, the European Union Industrial Property Office stated that : “… the function of origin is not, or is no longer, the only legal function of a trademark. The trademark also contains the goodwill [trademark image] attached to a specific product, thus making the goodwill easily transferable by means of assignment ; it fulfills a function of warranty by raising the consumer’s expectation that the product he buys tomorrow will have the same quality as the product he bought yesterday, and it fulfills an advertising function in that it is a good means by which efforts to create a positive image for a product can be channeled” (OHIM, Sept. 14. 2000, Unilever, R0436/1999-1, § 17). »
The TRESOR and LA VIE EST BELLE trademarks of SNC LACOME PARFUMS ET BEAUTE ET CIE were deemed to be infringed by a leaflet containing a commercial offer for the sale of eaux de parfums presented as “Fonds de Cuves de Grasse” in the form of a concordance table with a wide range of fragrances, including those of the TRESOR and LA VIE EST BELLE trademarks, the advertising being also misleading since SNC LACOME PARFUMS ET BEAUTE ET CIE has no manufacturing unit in Grasse (TGI of Paris, April 5, 2018); See also the judgment handed down on the same day in an action brought by S. A. L’OREAL for infringement of the trademarks ARMANI CODE G. Armani, FUEL FOR LIFE Diesel and MANIFESTO Yves Saint Laurent).
In its decision dated September 24, 2019, relating to a trademark infringement action brought by POMPES FUNEBRES PASCAL against SOCIETE DE DIFFUSION D’ENSEIGNES S.D. E and a number of funeral directors, the Paris Court of Appeal considered as denigratory comparative advertising the “advertising message according to which only the companies of the XXX funeral network would be ‘real XXX’, necessarily implying that the others, including those recommending the company POMPES FUNEBRES PASCAL, would be ‘fake XXX’».
The Judicial Court of Paris ruled on November 12, 2021 that the use of the ALFALIQUID trademark by a competitor to promote e-liquids (intended for electronic cigarettes) sold under its LIQUIDEO trademark was an infringement of the ALFALIQUID trademark, the Court nevertheless considering that the advertisement “the cheap ALFALIQUID FR4 bottles (sic) are replaced by the FS4 of the French trademark LIQUIDEO” cannot be analyzed as comparative advertising within the meaning of Directive 2006/114/EC, “but rather as the advertisement of a substitution of products referenced by the VAPOTARD company” (which is the owner of the ALFALIQUID trademark).