Trademark infringement: affixing a mark to goods for export

Published onApril 2018

So far, the affixing in France of a third-party’s trademark to products (or their packaging) for export was not considered to infringe the trademark owner’s rights if the products bearing the mark were not sold in France or Europe but were intended for sale in a foreign country where the exporter had trademark rights.

However, the affixing of a trademark as such may be considered as genuine use and allow it to avoid revocation for non-use.

This was an inconsistency, whereas the French Intellectual Property Code was very clear: unless authorized by the owner, the reproduction of a trademark for goods or services identical to those designated in the registration, as well as the export of goods bearing a counterfeit trademark are prohibited (articles L. 713-2 and L. 716-10).

In the context of a complex and long-running dispute in China and in France between a French wine trading company and traders of Chinese wines, the Court of Appeals of Paris held that the filing of the mark and the affixing of the mark in France to more than one million bottles exported and distributed in China were acts of trademark infringement (Court of Appeals of Paris, 4 September 2015, Case number 14/18575).

This decision was inconsistent with the earlier case-law set in 2007 by the Cour de cassation, the French Supreme Civil Court (10 July 2007, Case number 05-18.571, “Nutri-Riche”). In this case, the Court stated that the packaging of products with the affixing of the mark and the holding of such products, without placing them on the French market but only for their export to foreign countries where they can be lawfully marketed, proceed from a legitimate ground. Such use did not amount to trademark infringement.

On 17 January 2018, the French Supreme Court modified its interpretation of the texts to comply with the EU case law (Case number 15-29.276) and confirmed the judgment from the Court of Appeals of Paris. The mark was affixed in France, territory in which it is protected, infringement was thus constituted, even though the branded goods were intended for export to China.

What you need to remember

The Court of Appeals held that “the filing of the mark is in itself an act of trademark infringement”. This position is gradually phased out by current case law.

It is necessary to protect one’s trademark in each and every country of exploitation, i.e. both the country or countries of origin and the countries of destination.

The export of products to China requires the affixing of a mark in Chinese characters. This mark must be filed in the country of origin, where it is affixed (in France / European Union where appropriate) and in China, where it will be marketed.

Special case for goods sold in China. The transliteration of a mark is the process of expressing the sound of how a word is pronounced in the source language in the alphabet of the target language, to get a name that sounds very close to the original. The registration of this transliteration as a trademark is necessary, since the registration in Latin characters does not extend to its transliteration in Chinese. It is therefore up to the applicant to determine which Chinese sign best fits to its mark and to protect the same both in France and in China.

© INSCRIPTA