Fair use of a trademark

Published onApril 2015

Trademark rights are often compared to monopolistic rights. There are however some significant exceptions such as the one provided by Article L.713-6, b) of the French Intellectual Property Code.

Registration of a mark shall not prevent use of the same sign or a similar sign as: […] b) The necessary reference to state the intended purpose of the product or service, in particular as an accessory or spare part, provided no confusion exists as to their origin.

In accordance with this rule, the French Cour de cassation which is the Highest Civil Court in France has just issued two decisions reminding trademark owners that trademark rights are not absolute.

In the first case (1) Irish company RYANAIR filed a law suit against French web travel agency OPODO claiming infringement of their verbal and figurative Community trademarks RYANAIR. But the Supreme Court approved the prior decision of the Court of Appeals of Paris to dismiss the complaint after considering that OPODO had not used the trademarks as an attempt to offer services identical to those covered by the trademark registrations but as the only way of designating RYANAIR’s aerial transportation services. There was no likelihood of confusion as regards the origin of the services since the trademarks were merely used as information given to consumers with respect to the name of the airline company.

The Court might have restricted the scope of fair use to the case involving the verbal mark, without extending it to the case involving the figurative mark, but it did not. This is obviously another example of a liberalization trend affecting trademark law and driven by European authorities in favour of competition.

In the second case (2) the Cour de cassation decided a manufacturer of ties for grapes had committed no infringement of trademark rights in using, for a public demonstration of the way the products worked, a trademarked electric machine enabling to tie grapes manufactured and sold by another company. As a matter of fact, the machine used in the demonstration was authentic and the judges considered that there was no other way to show the compatibility between the ties and the electric machines. In addition the defendant had not claimed in the demonstration that its products were equivalent to the products manufactured by the plaintiff. There was no competition between them and there was no likelihood of confusion as regards the origin of the goods (3).

Trademark rights are not without exceptions. Trademark owners should consequently be more careful before claiming their rights have been infringed, especially when the use of their marks by third parties does not create a likelihood of confusion on the part of the public as regards the origin or source of the goods and services covered by the mark.

© INSCRIPTA

(1) Cour de cassation, Commercial chamber, 10 February 2015, Case No. J/2012/26023, and Court of Appeals of Paris, chamber 5-2, 23 March 2012, Case No. 2010/11168.

(2) Cour de cassation, Commercial chamber, 10 February 2015, Case No. Q/2013/28263, and Court of Appeals of Caen, civil and commercial chamber 2, 12 September 2013, Case No. 2011/03576.

(3) Should the plaintiff had claimed the mark had a reputation, the decision of the Courts may have been different since the use of such a mark is forbidden when it would take unfair advantage of, or be detrimental to, its repute.