Lexicon > Tolerance

IP Lexicon


Tolerance is part of the infringement of a trademark owner’s right due to his inaction and is provided for in article L.716-5 of the Intellectual Property Code which states that“In the case of a later registered mark, the use of which has been tolerated for five years, shall be inadmissible unless the application was made in bad faith. However, inadmissibility is limited to only those products and services for which the use has been tolerated.”.

In trademark law, foreclosure by acquiescence is therefore a defense by which the defendant raises the inadmissibility of an action for infringement of a later registered trademark whose use has been acquiesced to for five years, unless its filing was made in bad faith.

The Court of Cassation reiterated this in a commercial chamber ruling of July 5, 2016 (No. 14-18540), in which it held that:

“On the basis of these findings and sovereign assessments, from which it deduced that L’Oréal had necessarily been aware, for more than five years as of the date of the infringement proceedings, of the use by Cosmetica Cabinas of the “Ainhoa” trademark for goods in class 3, the Court of Appeal, which ruled on grounds that were appropriate to characterize both the use of the trademark by its owner in various countries, including France, on a regular basis since its registration, and, as these were two companies in a position of competition, the knowledge of this use with the knowledge of the owner of the trademark, both a use of the trademark by its owner in different countries of the European Union, including France, on a regular basis since its registration, and, in the case of two companies in a competitive situation, the knowledge of this use with a sufficient degree of certainty by the company owner of the earlier trademark, has legally justified its decision”.

Indeed, if the owner knowingly allows a third party to use his trademark without coming forward for a period of 5 years, he will no longer be able to bring an action for infringement or invalidity.

For there to be tolerance, four conditions must be met, according to established case law recalled in particular in a judgment of the General Court of the European Union of October 4, 2018, Asolo / EUIPO – Red Bull (FLÜGEL) (T-150/17) (points 31-35):

  • The later mark must be registered;
  • The owner must have knowingly tolerated the use of his mark for 5 years;
  • The tolerated mark must have been used in the Member State where the earlier mark is protected;
  • The third party using the mark must be in good faith.

If these four conditions are met, the owner of the trademark will not be able to sue for infringement or invalidity and thus there will be two trademarks on the market that will coexist.

Regulatory focus

Article 54 of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark expressly provides for the foreclosure of the Community trade mark by tolerance:

“The proprietor of a Community trade mark who has tolerated for five consecutive years the use of a later Community trade mark in the Community with knowledge of such use may no longer apply for a declaration of invalidity or oppose the use of the later trade mark on the basis of that earlier trade mark in respect of the goods or services for which the later trade mark has been used, unless the later Community trade mark was filed in bad faith.”

Case law focus

The time limit for foreclosure runs from the knowledge of the use of the later mark.

“It is the knowledge of the use of the trademark that must have been tolerated during 5 years to cause the foreclosure of the action for invalidity or the inadmissibility of the action for infringement.

Therefore, the starting point of these time limits cannot be the publication of the application for registration of the mark, nor even its grant, but must be assessed, in the case in point, by the knowledge of the actual use of the second mark.”

CA Paris, pole 5 – ch. 2, Nov. 17. 2017, n° 16/20736

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