Mélanie Villanova July 4 2022 Court issues reminder of conditions of application of foreclosure by acquiescence MIIP MADE IN IP | Intellectual Property - France Mélanie Villanova Intellectual Property FactsDecisionCommentIf there is one point that is regularly discussed when the question of an action against a registered trademark arises, it is the issue of foreclosure by tolerance. In a recent decision, the Paris Court of Appeal recalled the contours of this mechanism and its conditions of application.(1)FactsThe company, Gourmibox, active in the field of online sales of culinary products and kitchen accessories, has owned the trademark GOURMIBOX since 25 July 2012. It learned of the existence of the trademark LA GOURMET BOX TERROIR, VOYAGE & GASTRONOMIE, filed on 10 June 2014 by the company Gastron'home, which carries out a similar activity – namely, the distance selling of food products in the form of boxes.After having sent a cease-and-desist letter to Gastron'home on 27 March 2015, Gourmibox sued it, on 10 August 2020, for trademark infringement and unfair and parasitic competition.Gastron'home argued that this action was inadmissible because it had been foreclosed by acquiescence, a ground retained by the pre-trial judge. Gourmibox appealed this decision.DecisionAccording to article L 716-4-6 of the French Intellectual Property Code:Any infringement action brought by the owner of an earlier trademark against a later trademark shall be inadmissible: 1° Where the owner of the earlier trademark has tolerated, for a period of five consecutive years, the use of the later trademark with knowledge of such use and for the goods or services in respect of which the use was tolerated, unless the application was filed in bad faith.In this case, the date on which the cease-and-desist letter was sent could not be sufficient to recognise the foreclosure by acquiescence – in particular, because of the extension of time due to the period of confinement. Thus, it was necessary to determine the applicant's knowledge of the contested mark prior to any action in order to characterise this tolerance.However, the Court noted that:the parties operated in a niche sector;the parties were in direct competition with each other;the parties used the same internet sales technique and the same advertising networks; andGastron'home had made substantial communication efforts for the launch of its trademark.Therefore, the Court concluded that Gourmibox had been aware of the existence of the trademark LA GOURMET BOX TERROIR, VOYAGE & GASTRONOMIE at the time of Gastron'home's launch in 2014, not on the date of sending the letter of notice.In addition, the Court recalled that the recognition of the foreclosure by acquiescence does not require the existence of proof of serious use, so it was not necessary that the use of the trademark in question had been quantitatively significant, contrary to what Gourmibox had argued.Consequently, the Court rejected all of Gourmibox's arguments attempting to demonstrate that it had not legitimately had the opportunity to become aware of the later mark, and the decision of inadmissibility was confirmed.CommentThis decision highlights that it is not trivial to send a letter of formal notice in the context of a trademark infringement, but also that this action alone is not sufficient to trigger the time limit. A set of clues can be used to determine whether the contested trademark is known on the market. These different elements must be analysed prior to any action in order to avoid the risk of its inadmissibility being raised.This decision can be compared with a recent decision of the Court of Justice of the European Union,(2) in which the Court recalled that the time limit for bringing an action – namely five consecutive years following knowledge of the use of a later trademark – can be interrupted by the sending of a letter of formal notice, provided that the owner of the earlier trademark introduces a legally binding remedy "within a reasonable period of time" demonstrating that they are continuing their efforts to obtain the cessation of use of the contested trademark.These two decisions highlight the importance of maintaining a close follow-up when sending a formal notice and the need to take a global view of the case in order to anticipate, as well as possible, any risk of counteraction.This case also highlights the inestimable value of the implementation of trademark monitoring, which would have allowed, in this case, to intervene prior to any registration or, at least, to lead to a better anticipation upstream of the legal situation beyond the mere fact of the knowledge of the use of the second trademark.For further information on this topic please contact Mélanie Villanova at INLEX IP Expertise by telephone (+33 1 56 59 70 90) or email ([email protected]). The INLEX IP Expertise website can be accessed at inlex.com.Endnotes(1) Paris Court Of Appeal 13 April 2022 (075/2022).(2) 19 May 2022, C-466/20.