Is it possible to counter-claim for revocation on the ground of non-use for products and services which are not the subject of a trade mark infringement court action? The Paris Court of Appeal had (i) on October 20, 2015, ruled that a counter-claim made for products and services which have not been invoked could be admissible and (ii) on December 1, 2015, the same chamber of the Court with the same judges ruled it could not.

On September 1, 2017 the Paris Court of first instance applied the reasoning of the Court of Appeal made on December 1, 2015 and ruled that the counter-claim for revocation on the ground of non-use of the French semi-figurative trade mark (above left) no. 1710939 filed on December 26, 2007, for “beer, mineral and sparkling water and other non-alcoholic beverages, fruit beverages and fruit juices, syrup and other preparation to make beverages” is inadmissible since the claimant has only brought its trade mark infringement action based on “Alcoholic beverages (except beers)”.

According to article 70 of the French civil procedure code “counter-claims or additional claims are admissible only if they are connected by a sufficient link to the original claim”.

In this case, Champagne Lanson, a subsidiary of Lanson-BCC, which notably produces and sells the well-known champagne “Lanson” brought an infringement claim on the ground of its trade mark (above left) against a French company which notably offered for sale a special cuvée of champagne under the trade mark (above right).

Even though Champagne Lanson only based its action on the products “Alcoholic beverages (except beers)”, the defendant made a counter-claim seeking revocation on the ground of non-use for “beer, mineral and sparkling water and other non-alcoholic beverages, fruit beverages and fruit juices, syrup and other preparation to make beverages” also included in the specification of Champagne Lanson’s trade mark.

The finding of the Paris Court of first instance reflects the French leading case-law about counter-claims in infringement/nullity actions.

Case Ref: Paris Court of First instance – September 1, 2017 – case 16/01610– “Champagne Lanson vs. C.” (appeal pending).