French Supreme Court, commercial chamber, 6 January 2015
It is the first time the French Supreme Court has an occasion to make a determination on this issue.
The French Supreme Court handed down a leading decision on 6 January 2015, upholding the Paris Court of Appeal's ruling that a plea of inadmissibility could be made against any holder of prior rights, not only holders of trademarks or signs used in the same field.
Hachette Filipacchi Presse, publisher of the widely known magazineParis-Match, had sought to block the continued operation in France of the dating website "Match.com" operated by the U.S. company of the same name, citing the fame of its "Paris-Match" trademark.
The suit was based, inter alia, on the provisions of article L.713-5 of the French Intellectual Property Code.1
Match.com entered a plea of inadmissibility due to the extinction of rights through acquiescence, based on the provisions of Directive 89/104 of 21 December 19882 harmonising trademarks legislation and article 54§2 of Council Regulation 207/2009 of 26 February 2009 on the Community trademark.3 Match.com contended that Hachette Filipacchi Presse 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 L.716-5 of the French Intellectual Property Code4 could only be argued in an infringement action, in the strict sense. It could not, they claimed, be part of an action relying on article L.713-5 of the Code protecting famous or well-known trademarks against uses to designate dissimilar products or services, which are actions for civil liability.
The French 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 French Intellectual Property 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 time frame. 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 French 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.
Article L.713-5 (1): "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."
Article 9 §1 of Directive 89/104 of 21 December 1988 on trademarks: "Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4 (2) has acquiesced, for a period of five successive years, irt [sic] the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith."
Article 54§2 of EC Regulation 207/2009: "Where the proprietor of an earlier national trade mark 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 trade mark in the Member State in which the earlier trade mark 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 trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith."
Article L.714-3 : "Civil 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."