Use your trademark to avoid its revocation

Use your trademark to avoid the risk of revocation and keep proof of it

A Trademark allows to obtain a monopoly of exploitation on a sign in connection with the goods or services referred to in the application for registration. However, it is a living legal title, linked to commercial development over time and whose force and enforceability weaken if it is not or no longer used for all or part of the protected goods and services. In France and in most European countries, the absolute protection ends 5 years after the registration of the trademark.

The legal news reminds us of this reality in a recent decision of the Court of Cassation after an 8-year legal procedure.

The company L’EQUIPE is the owner of a trademark filed and duly registered on 11/12/1996 under the No. 96654944. This trademark is registered and renewed for numerous goods and services in 44 classes of activities (out of 45 available)!

This trademark is mainly known by the public for its exploitation for the eponymous newspaper and the information media in the field of sports.

The company L’EQUIPE had sued the company SPORT CO ET MARQUAGE for infringement by imitation of the mark concerning the later mark (“Equip’sport“) n°3478011 filed in classes 25 (clothing), 28 (games) and 41 (sports activities).

In its defense, SPORT CO ET MARQUAGE had filed a counterclaim for revocation of the rights of the company L’EQUIPE for all the goods designated in classes 25, 28 and 41 of the earlier trademark on which the dispute was based and in particular “Education; training; entertainment; sports and cultural activities“.

In 2014, the Strasbourg Judicial Court had pronounced the revocation of the trademark L’EQUIPE for the services of “education, training, entertainment and sports and cultural activities” in class 41 as of 04/04/2008, which was then confirmed in particular by the decision rendered on referral of the Court of Appeal of Nancy on 20/09/2020. The Court of Cassation has just confirmed this decision and the partial revocation of the trademark in a decision dated 22/06/2021.

In such a situation, the owner of the trademark challenged for revocation must establish the proof of the serious use of his trademark over the reference period for the goods or services concerned.

The courts considered that the use of the trademark in the context of a sports sponsorship contract (evidence provided by the company L’EQUIPE) allowing it to advertise its trademark through a sponsorship operation could not qualify as use to designate a sports activity that it would engage in or market. The promotional use was not, rightly, validated as a serious use for the sports activities covered by the application.

This decision is an opportunity to remind that since 2020, the procedure for revocation of a trademark not used for more than 5 years for some or all of the goods and/or services covered by the application has been greatly simplified since this action is possible directly before the INPI through an administrative procedure.

– Eléonore DAUPHANT, Industrial Property Attorney and Partner at Mark & Law

Sources:

• PIBD of September 15, 2022 (in French), accessible here. 
• Court of Cassation, Commercial Chamber, June 22, 2022, Decision No. 21-10.051. Décision de la Cour de cassation, chambre commerciale, du 22 juin 2022, n°21-10.051