The French Supreme Court has recently had occasion to rule twice on the matter of deletion of bar codes and the question as to whether this act can be sanctioned as a trade mark infringement.

The argumentation developed in those two cases before the Supreme Court was on two different grounds, which leads to two different decisions, one considering there is trade mark infringement and one considering there is no trade mark infringement.

In the first case, Jas Hennessy & Co had brought an action against several resellers of brandy bottles bearing its trade marks but whose bar codes had willingly been scratched out and blackened, so that they were illegible.

The Supreme Court, on 24 November 2009, confirmed the decision of the Court of Appeal and ordered that because of the scratching out of the bar codes on the bottles, Hennessy was no longer able to ensure to consumers the functions of guarantee, authenticity and quality, which are the essential functions of a trade mark. Therefore, the resellers were held liable of trade mark infringement.

In the second case, the facts are identical: the bar codes of champagne bottles bearing the trade marks of Louis Roederer were blackened.

The trade mark owner asserted that if the code in itself was not protected as a trade mark, the label on which it was reproduced was protected as a trade mark. Therefore, the deletion of the bar code was to be considered as a modification of the trade mark without the consent of the trade mark owner, and therefore as a trade mark infringement. The Court of Appeal followed this argument and condemned the distributors for trade mark infringement.

The Supreme Court, however, stated that the Court of Appeal violated the law, as its decision was based on the ground that the deleted sign was affixed on a label registered as a trade mark, whereas the sign was not protected by itself. The French Supreme Court invalidated the Court of Appeal’s decision, and considered there was no trade mark infringement.

It must be noted that in that second decision, the distributors were nevertheless sanctioned on the ground of dispositions of the French consumers code, which punishes the fact to offer for sale, sell or have in commercial premises goods which signs enabling identification were deleted or damaged.

Those two decisions led to the conclusion that the deletion of bar codes on a product is not a modification of the trade mark protecting the label, but affects the mere function of the trade mark, which is to guarantee the authenticity and quality of a product, and is therefore a trade mark infringement.