Inadmissibility plea based on extinction of rights by acquiescence may be made against famous marks

France

On  January 6 2015 the French Supreme Court handed down a leading decision upholding the Paris Court of Appeal's ruling that a plea of inadmissibility based on the extinction of rights by acquiescence could be made against any holder of prior rights, not only holders of trademarks or signs used in the same field. It is the first time that the Supreme Court has had an occasion to make a determination on this issue.

Hachette Filipacchi Presse, publisher of the widely known magazine Paris-Match, had sought to block the continued operation in France of the dating website Match.com operated by the US company of the same name, citing the fame of its PARIS-MATCH trademark.

The suit was based, among other things, on the provisions of Article L713-5 of the French Intellectual Property Code. Article L713-5(1) reads as follows:

"A party engaging in the reproduction or imitation of a trademark that is famous for products or services that are not similar to those designated in the registration may be liable if such reproduction or imitation is capable of harming the trademark owner or if such use of the trademark is unjustified."

Match.com entered a plea of inadmissibility due to the extinction of rights through acquiescence, based on the provisions of the First Trademarks Directive (89/104/EEC) and Article 54§2 of the Community Trademark Regulation (207/2009).

Article 9§1 of Directive 89/104 reads as follows:

"Where, in a member state, the proprietor of an earlier trademark as referred to in Article 4(2) has acquiesced, for a period of five successive years, [to] the use of a later trademark registered in that member state while being aware of such use, he shall no longer be entitled on the basis of the earlier trademark either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used, unless registration of the later trademark was applied for in bad faith."

Article 54§2 of Regulation 207/2009 reads as follows:

"Where the proprietor of an earlier national trademark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trademark in the member state in which the earlier trademark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trademark or of the other earlier sign either to apply for a declaration that the later trademark is invalid or to oppose the use of the later trademark in respect of the goods or services for which the later trademark has been used, unless registration of the later Community trademark was applied for in bad faith."

Match.com contended that Hachette Filipacchi could no longer take action because it had tolerated the use of its Community trademark MATCH.COM in France for over five years.

Hachette Filipacchi argued that the extinction of rights through acquiescence as established in national law in Article L716-5 of the Intellectual Property Code could only be argued in an infringement action, in the strict sense (pursuant to Article L714-3, "[c]ivil actions for infringement are brought by the trademark owner. (…) Any action for infringement pertaining to a later registered trademark of which the use has been tolerated by the trademark holder for a period of five years shall be inadmissible, save where it has been registered in bad faith."). It could not, it claimed, be part of an action relying on Article L713-5 of the code protecting famous or well-known trademarks against uses to designate dissimilar products or services, which are actions for civil liability.

The Supreme Court held that no distinction could be made based on the type of suit, and dismissed the appeal. The plea of inadmissibility was deemed to apply to the civil liability actions referred to in Article L713-5 of the code, as well as to actions for infringement.

This broad interpretation of the scope of pleas for inadmissibility resulted from a combined reading of the aforementioned provisions from the regulation and the directive, and requires owners of famous trademarks not to remain passive vis-à-vis uses of their mark of which they are aware, and to take needed action within the prescribed timeframe. As a reminder, the courts take the view that only a court summons suspends the time bar for an extinction of rights.

This decision also offered an opportunity to the Supreme Court to remind us of the criteria for evaluating actual use of a trademark in France. In the court's opinion, ‘Match.com’ should be considered to be used in France insofar as the service offered through the ‘match.com’ website included members residing in France, irrespective of the fact that it was only available in English at the time in question.

Céline Bey, Herbert Smith Freehills LLP, Paris

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