If a non-renewed trademark is no longer enforceable against third parties, does this mean that a market player can take over the universe of a discontinued trademark and benefit from the efforts that were made by the previous owners to promote this trademark?
bandonment is defined Aa tacit renunciation of a trademark that results from unequivocal behavior. This is mainly manifested by the non-renewal of the registration of this trademark… As a consequence of this abandonment, the exclusive right on the trademark is lost by its owner.
A trademark that has been abandoned can therefore, in principle, be used freely.
The impossibility of suing for infringement
The monopoly conferred by trademark law, as well as the right of the trademark owner to oppose any use of the trademark, disappears with the trademark. Any infringement action concerning acts subsequent to the period of protection is therefore inadmissible.
Freedom of trade and free competition
Case law has established the principle that the use of a trademark that has been abandoned or is no longer protected by trademark law is a matter of freedom of trade and free competition and that an action in unfair competition would also be inadmissible: “The simple use of the name, which is no longer part of a protected trademark, cannot characterize unfair competition, but proceeds from the freedom of trade and free competition”. (CA Paris, Pôle 5 chamber 2, November 18, 2011).
The exception: an action may be upheld by the courts in case of fraudulent filing creating a risk of confusion.
The abandoned trademark becomes a res nullius and anyone can use it.
If it is repeated in a way that is likely to mislead the public, there may be grounds for an action in nullity for fraudulent filing or to an action in unfair competition. Although this may be difficult to implement due to the lack of private rights to the name.
However, the courts have already allowed an action for unfair competition based on an abandoned trademark (TGI Paris, May 4, 1987, RD propr.ind.1987, n°14, p°120).
Cancellation of the deposit for fraud
For a deposit to be considered fraudulent, two conditions must be met:
- the applicant’s knowledge of the prior trademark on the day of the fraudulent filing and;
- demonstration of bad faith on the part of the applicant, which could consist, among other things, of an intention to take advantage of the pseudonym of the owner of the earlier trademark
(Cass. Com, 15 October 1996, PIBD 1997. 627. III. 118).
Misuse in case of risk of confusion
The use of a name, although not protected by trademark law, may also be considered wrongful and contrary to fair trade practices, if there is a risk of confusion as to the origin of the goods bearing the disputed sign (cited above, CA Paris, Pôle 5, chamber 2, November 18, 2011).
Consequently, taking back an abandoned trademark is not in itself a wrongful act, provided that it is done in good faith and that there is no risk of confusion in the mind of the consumer.
