In two recent decisions, the French Supreme Court (Cour de Cassation) held that “the application for registration of a sign as a trademark does not constitute an act of infringement”. The decision is in line with recent Court of Justice of the European Union (CJEU) case law but time will tell whether the ruling will result in more nuisance trade mark applications being filed.

Until the recent decisions, the courts had been divided on this issue, with some still considering that a mere application for registration constitutes an act of infringement, regardless of the use of the trade mark at issue. The Paris court of appeal had emphasised in a decision in 2016 that, by filing a trade mark, the applicant sought to obtain an economic advantage in the context of its commercial activity and that this act alone constituted use of the sign in the course of trade (RG No. 15/08997). The French Supreme Court has also held that commercial use of an infringing trade mark is not necessary to establish an act of infringement. It regularly held that “the infringement of the private right constituted by the ownership of a trademark justifies in itself the award of damages, regardless of the good faith of the infringer or the lack of use in the course of trade of the infringing trade mark”.

Two rulings - a single outcome

The first case was brought by the coffee machine manufacturer, Malongo, owner of the word mark 'XPOD' registered since 2005 for goods relating to coffee machines. In 2014, Technopool filed the trade mark 'ZPOD' for identical goods, and its subsidiary, Facotec, considered marketing coffee machines under the mark. Malongo filed an action against its competitors for the cancellation of the ZPOD trade mark registration and infringement of its XPOD mark.

The Paris court of appeal ordered the cancellation of the 'ZPOD' trade mark registration in 2019, holding that there was a likelihood of confusion with the earlier XPOD trade mark. But,the court dismissed Malongo’s trade mark infringement claim, holding that the 'ZPOD' mark had not been used in the course of trade before its cancellation. The court held that “the filing of a cancelled trademark, which is deemed not to have existed, cannot in itself constitute an act of infringement.''

Malongo filed an appeal before the French Supreme Court, arguing that a trade mark application, even without any use of the said trade mark, constitutes an act of infringement.

The second decision arises from a claim filed by Wolfberger, which, in 2012, acquired the assets of Domaine Lucien Albrecht, including the trade marks 'LUCIEN ALBRECHT' and 'WEID' designating wines and sparkling wine from Alsace. The Albrecht family, which was the previous owner of Domaine Lucien Albrecht, filed several trade marks after the transfer of ownership, including 'JEAN ALBRECHT', 'LE WEID DE JEAN ALBRECHT' and 'FAMILLE ALBRECHT', to designate identical products. The French trade mark office, INPI, refused to register these signs as trade marks, but Wolfberger nonetheless sued the Albrecht family for trade mark infringement.

In July 2019, the Colmar court of appeal rejected Wolfberger’s infringement claims. An appeal was filed before the French Supreme Court.

In both cases, the French Supreme Court ruled that an application for registration of a sign as a trade mark does not constitute an act of infringement when such an application, even when granted, does not characterise a use for goods or services in the absence of any marketing of goods or services under the sign. The French Supreme Court added that “Likewise, in such a case, no likelihood 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 itself with CJEU rulings

The French Supreme Court justified its decisions by specifically referring to the Daimler decision of the Court of Justice of the EU and by indicating that the position of the French Supreme Court must be revised in the light of European case law. The case can be contrasted with a recent decision of the UK High Court (IPEC) which held that filing a trade mark application can constitute passing off.

The future will tell us whether this ruling generates an increasing number of trade marks merely filed as a nuisance, in the absence of the dissuasive effect of a potential infringement action.

References: French Supreme Court, Commercial Chamber, 13 October 2021, No. 19-20.504 and 19-20.959.