Acquiescence or tolerance to infringement of trademarks in France

Published onMay 2015

The acquiescence has been introduced into the French law in 1991 by the transposition of the European Directive No. 89/104 of 21 December 1988. Unlike in the Common Law system countries, where the effect of acquiescence applies to all types of Intellectual Property rights, in France the tolerance applies only to registered trademarks.

The justification for recognising the effect of acquiescence is based on reasons of legal certainty, and on the need to grant a constant status to the later right that has been used by its owner in good faith for a substantial length of time.

The article 9 of the Directive provides that “Where, in a Member State, the proprietor of an earlier trade mark as referred to in Article 4(2) has acquiesced, for a period of five successive years, in the use of a later trade mark registered in that Member State while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later trade mark was applied for in bad faith.”

The same provisions are transposed in the article 54 of Community trade mark regulation (CTMR) relating to limitation in consequence of acquiescence:

1. Where the proprietor of a Community trade mark has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Community while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.

2. Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.

The cumulative requirements for the admission of acquiescence are:

  • Good faith of the applicant; mere knowledge of the existence of the prior right is not sufficient to preclude good faith. The assessment of good or bad faith is a question of fact and must be made taking into account all the elements relating to the conduct of the later right-holder and the relations existing between the parties prior to the filing of the later trademark;
  • Uninterrupted use of the later trademark for at least five years;
  • Knowledge of the prior right-holder of the use of the later trademark; this is an essential criterion for the application of the acquiescence mechanism. Such knowledge cannot be presumed from the publication of the trademark registration. It is a question of fact and can be proved by any means.

In France, it is necessary to initiate legal action in order to interrupt the acquiescence.

It may be noted that French legislators introduced some discrepancies between invalidity proceedings and infringement proceedings:

  • The later trade mark that benefits from the extinction of rights due to acquiescence can no longer be invalidated, whatever the nature of the earlier right invoked (registered trademark or well-known trademark, company name, trade name, signboard known throughout the national territory, copyright, etc.) (1);
  • A cancellation action based on registered trademark will be dismissed as inadmissible if filed out of time while the use of such trade mark may still may be prohibited pursuant to another earlier right, and in particular company names, trade names or domain names (2).

It leads to an awkward situation, where the law prevents the holder of a strong Intellectual Property right such as a trademark from obtaining a judicial sanction against an infringement of such right, while it allows infringement lawsuit based on other rights considered as minor.

French law would be simpler and clearer if there was a single rule for the admission of acquiescence in case of any action against a later trademark, whether a cancellation or an infringement action.

Besides those notwithstanding provisions, limitation periods in civil matters have been reduced from 30 to 5 years in 2008. “Personal actions or movable rights of action prescribe in five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right”.

This general limitation of a five-year period from the knowledge of the alleged acts applies now to any civil action based on any type of Intellectual Property rights, without prejudice to the special provisions of acquiescence.

Vigilance and due diligence are essential for those who wish to defend their French IP rights.

© INSCRIPTA

(1) Article L.714-3 of the French Intellectual Property Code: “The registration of a mark that does not comply with Articles L711-1 to L711-4 shall be declared null and void by court decision.

The public prosecutor may institute invalidity proceedings ex officio under Articles L711-1, L711-2 and L711-3.

Invalidity proceedings under Article L711-4 may be instituted only by the owner of the prior right. However, such proceedings shall not be admissible if the mark has been registered in good faith and if he has acquiesced to its use during a period of five years.

An invalidity decision shall be absolute.

(2) Article L.716-5 of the French Intellectual Property Code: “Civil infringement proceedings shall be instituted by the owner of the mark. However, the beneficiary of an exclusive right of exploitation may institute infringement proceedings, unless otherwise laid down in the contract, if after formal notice the owner does not exercise such right.

Any party to a licensing contract shall be entitled to participate in the infringement proceedings instituted by another party in order to obtain remedy for the prejudice he has himself sustained.

Infringement proceedings shall be barred after three years.

Any proceedings for infringement by a later registered mark of which use has been tolerated for five years shall not be admissible unless the registration was applied for in bad faith. However, non-admissibility shall be limited to those goods and services for which use has been tolerated.