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Operation in a modified form

Vanessa Bouchara

Updated on January 16, 2022

Exploitation in a modified form: the value of owning a “family of brands

Trademark owners often tend to multiply trademark registrations and thus feel better protected. They register all possible and unimaginable variants of the flagship word or image of the company in which they have invested so much.

‘Although this seems reassuring at first sight, it is not without risk since the declinations that are no longer used risk being cancelled by the Courts if they are not used as filed.

Article L. 714-5 of the Intellectual Property Code provides that :

“The owner of a trademark who, without good reason, has not made genuine use of it, in respect of the goods or services for which the trademark is registered, for an uninterrupted period of five years, shall forfeit his rights.

Meaningful use can be defined as “the use of the trademark in a modified form that does not alter its distinctive character”.

Consequently, the use of a sign that is slightly different from the trademark claimed to be invalid should serve to establish genuine use.

In the case of multiple filings, the question of whether, in the presence of several filings with minimal differences, the exploitation of only one of the registered variations avoids the sanction of revocation on the other trademarks is extremely important for trademark owners. On this point, the case law has been fluctuating and uncertain, and has finally aligned itself with the case law of the European Union.

First of all, in 1992, the ‘Cour de cassation’, in plenary session, considered, in a case BEGHIN SAY that :

The use of a registered trademark, similar to another registered trademark, is not equivalent to the use of the latter, and article 5 C 2 of the Paris Convention is only applicable if only one trademark is involved” (Cass. Assemblée plénière, July 16, 1992, 89-16.589).

However, in the years following the 1992 decision of the ‘Cour de cassation’, judges were very reluctant to align themselves with this decision and continued to consider that in the case of multiple filings, the trademark that was used should allow its variants to escape revocation.

Thus, in a famous LANCOME decision issued by the ‘Cour d’appel de Paris’, it was considered that :

the owner of two trademarks who uses only the second one in date [POÊME] must be able to avoid the forfeiture of his rights on his first filing [POEME], if the differences between one and the other are minimal and do not alter the distinctive character, essential of the first sign “(CA, Paris, 4e ch., 21 January 2000, PIBD 2000 697 III-234).

The only difference being the presence of a circumflex on the E, the Court held that the use of one was equivalent to the use of the other.

It is in this context that the ‘Cour de cassation’ reversed its position by rendering three decisions on March 14, 2006 in the cases of PLAYBOY (Cass. Com., March 14, 2006, n°03-20.198), SMILEY (Cass. Com., March 14, 2006, n°03-18.732) and LA CENTRALE DES PARTICULIERS (Cass. Com., March 14, 2006, n°04-10.971)

In these three decisions, the ‘Cour de cassation’ considered that the variants should not be subject to revocation, since they were indeed the use of a trademark in a modified form that did not alter its distinctive character.

The ‘Cour de cassation’ has been rather pro-trademark owners since it allowed the owners of these trademarks to escape forfeiture on their “family of trademarks” on the condition that only one of the trademarks of this family is exploited.

However, it is under the impact of Community decisions, in particular the case of Il Ponte Finanziara SpA v. EUIPO, CFI, of February 23, 2006 (ECJ, September 13, 2007, case Il Ponte Finanziara SpA v. EUIPO, C-234/06 P), which concluded in the opposite direction, that the French Courts seem to have changed their position again.

Indeed, the ‘Cour d’appel de Paris’, in two rulings dated May 30, 2012 (CA, Paris, Pôle 5, March 1, 2013, n°2012/00035), held that by filing several The defendants to the declaration of invalidity for revocation intended to distinguish their trademarks from each other and that it was up to them to prove a serious use for each of them, despite their strong similarity.

Nevertheless, the ‘Cour de cassation’ maintained its position, as it overturned the decision of the Court of Appeal of March 1, 2013 by a judgment of June 3, 2013 (Cass. Com., June 3, 2014, No. 13-17.769) by stating that the former Regulation (EC) No. 207/2009 of February 26, 2009 (Now replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017) on the Community trademark did not require ” only that the trademark used differs from the registered trademarks only in elements that do not alter their distinctive character, regardless of whether the modified trademark was itself registered ” (the decision of the Paris Court of Appeal having been upheld only because of the insufficiency of the evidence of use brought by the owners to allege a serious use, see Cass. Com., September 24, 2013, n°12-22.966). Thus, the Court of Cassation seemed to maintain the possibility of avoiding the revocation of a trademark belonging to a set of trademarks of the same family as long as the trademarks differ from each other only by elements that do not alter their distinctive character.

However, this decision is not surprising when reading the European Court of Justice’s case of Rintisch v. Klaus Eder of October 25, 2012 (CJEU, October 25, 2012, case Rintisch v. Klaus Eder, C-553/11), in which the Court held that ” Article 10(2)(a) of Directive 89/104 must be interpreted as not precluding the proprietor of a registered trademark from relying, for the purpose of establishing use of the trademark within the meaning of that provision, on its use in a form which differs from that in which the trademark was registered, without the differences between those two forms altering the distinctive character of the trademark, notwithstanding the fact that that different form is itself registered as a trademark.

In this decision, the CJEU distinguishes the Rintisch case from Il Ponte Finanziara SpA v. EUIPO by emphasizing that the latter case concerned a “family” or “series” of trademarks, and that in order to establish the existence of such a family, it was necessary to demonstrate ” the use of a sufficient number of trademarks likely to constitute this “family” or “series “.

This decision was transposed by the ‘Cour de cassation’ in a judgment dated January 19, 2016 (Cass. Com., January 19, 2016, 14-18.434).

Therefore, since the Rintisch and Il Ponte Finanziara cases, it is no longer possible to rely on the use of a single brand to save a whole family of similar brands from the forfeiture However, a trademark owner can still use a trademark, even a registered one, to save another trademark from revocation if it is not a merely “defensive” trademark, i.e. a “defensive” trademark. the registration of which has no other purpose than to secure or extend the scope of protection of another registered trademark, which is registered in the form in which it is used ” (CJEU, 25 October 2012, Rintisch v. Klaus Eder, C-553/11).

Under these conditions, trademark owners will have to pay particular attention to the use they intend to make of the signs they register and review their trademark protection strategy accordingly. Registering “families” of trademarks simply to guarantee a large field of protection will only be of temporary use since they will most likely be cancelled after 5 years if no serious use is made of them.

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