Lexicon > Claim of ownership

IP Lexicon

Claim of ownership

Generally speaking, a claim is an action brought by the owner against a third party who is in physical possession of the property and refuses to return it.

In intellectual property matters, the claim is not to a tangible asset but to the intangible title to the asset. To claim one’s intellectual property is therefore to have one’s ownership of a right or title recognized.

For example, the claim of ownership of a trademark is a procedure that allows, in the face of a fraudulent filing, to request that the fraudulently filed trademark be returned to its legitimate owner.

The limitation period for an action to claim ownership is five years from the publication of the application for registration of the disputed mark, unless the applicant is acting in bad faith. In this case, the time limit for action is reduced to 3 years.

The notion of fraudulent trademark registration is understood as a registration that is regular in form, but carried out with the sole intention of harming the interests of a third party, by depriving him of the possibility of using the sign that he is about to use or is already using.

In a classic way, it is up to the person who claims fraud to prove it.

The assessment of the interest to act is done in concreto by the judges with regard to a set of indications, in particular by the demonstration of the expected advantage of the action in claim.

The interest to act can thus be demonstrated if it is established that the plaintiff to the action is the owner of trademarks identical or similar to the contested sign, that he makes an effective and sustained use of it.

Evidence Update

For the judges, the fraudulent nature of the contested filing was not demonstrated by the plaintiff, since he was not the owner of any right on the contested sign on the day of the said filing. Moreover, it was not until 6 years after the date of the contested filing that the plaintiff decided to act against it.

CA Paris, pole 5 – ch. 2, May 15, 2020, No. 18/21789

Point of jurisprudence

On the relevance of the transfer of the fraudulent trademark to the plaintiff company, the judges based themselves on “the criteria used by the European courts to analyze the goods and services in the context of an infringement action or an action for a declaration of invalidity of an earlier trademark.

The Bouchara Law Firm assists you in particular inprotection and defense of your intellectual property rights.