French Supreme Court, Decision of 6 November 2012, No. 11-21334, Forge de Belleville v. City of Paris
Recently, the French Supreme Court rendered several decisions on fraudulent trademark filings, the most recent concerning a trademark application by the City of Paris, based on its land ownership.
Article L.712-6 of the French Intellectual Property Code (IPC) provides that if a trademark was filed fraudulently, any person believing to have a right in the mark may claim the transfer of ownership in legal proceedings. The cancellation of the fraudulently filed trademark can also be based on the general principle of fraus omnia corrumpit.
In the case at hand, both legal grounds were claimed to qualify a trademark filing as fraudulent.
For twenty years, the City of Paris had leased a land called LA FORGE DE BELLEVILLE to a non-profit association which provided and managed artist ateliers and called itself La Forge de Belleville as of 1997. In 2005, the lease was terminaetd and the City of Paris entered into a lease agreement with a different association. At the same time, the City of Paris filed the French trademark LA FORGE DE BELLEVILLE to designate various services, including entertainment, exhibition organization and cultural activities (classes 35, 38 and 41).
La Forge de Belleville initiated proceedings before the Paris Court of First Instance to obtain the transfer of ownership of the allegedly fraudulently filed trademark, based on Article L.712-6 of the IPC.
The Court of First Instance ordered the transfer of ownership, holding that the City of Paris must have been aware that LA FORGE DE BELLEVILLE has been used by the association since 1997 as it had been its lessee for many years.
The Paris Court of Appeal overruled this decision. The court said that the fraudulent character of a trademark application had to be assessed at the date of filing. At that date, i.e. in 2005, the term LA FORGE DE BELLEVILLE was used both to designate the land and for the artistic activities developed on the land. Hence, the City of Paris had not filed the trademark LA FORGE DE BELLEVILLE fraudulently.
Upon further appeal, the French Supreme Court granted La Forge de Belleville's claim on the grounds of both Article L.712-6 of the IPC and the general principle of fraus omnia corrumpit. The court held that the trademark filing had to be considered fraudulent, as the City of Paris was fully aware of the use of LA FORGE DE BELLEVILLE by the association since 1997. The trademark application happened at the same time as the City of Paris negotiated the renewal of the lease with La Forge de Belleville. The trademark registration barred La Forge de Belleville from using its name.
By basing its decision both on Article L.712-6 of the IPC and on the general principle of fraus omnia corrumpit, the French Supreme Court implicitly ruled that, irrespective of the purpose of the action (i.e. transfer of ownership or cancellation of the trademark), the criterion for assessing a fraudulent trademark filing was the same, namely the trademark applicant's willful disregard of interests. Obviously, the success of a claim for fraudulent trademark filing will still depend on the evidence the claimant will be able to file to prove the willful disregard of his interests.