Genuine use of a mark – The Delage case

Published onSeptember 2017

A non-profit association that revives a mark for cars and provides spare parts to collectors does not make a genuine use of such mark.

This is what the Cour de cassation, the Highest civil Court in France, decided in a case dealing about the French mark for automobiles and race cars DELAGE.

A French association called The friends of DELAGE applied for the mark DELAGE for vehicles in 1985. Originally, the mark was that of the French car maker DELAGE established in the 1900’s and disappeared in the 1950’s. The manufacturing of cars stopped in 1955. And in the 1980’s, the association thought of reviving the mark and using it among collectors.

Successors to the company DELAGE filed a lawsuit claiming that the mark DELAGE should be liable to revocation for non-use according to Article L.714-5 of the French Intellectual Property Code.

In April 2015, the Court of Appeals of Paris saved the mark considering that it had been put to genuine use by the association, in conformity with the statutes of the association and with the essential function of the mark which is to guarantee the origin of the vehicles or parts of vehicles for which it was registered. For the Court of Appeals the non-profit nature of the use or the fact that it was quantitatively limited was not an obstacle to genuine use.

It is commonly admitted that the owner of a mark for cars puts it to genuine use if it is in connection with spare parts for the same cars or if the mark remains in use on the second-hand market. But in the DELAGE scenario, the association was not the original owner of the mark. The association had not put the DELAGE cars on the market. The association had filed the DELAGE mark almost 30 years after the last DELAGE car was sold. It was not the same DELAGE mark and it was not the same owner.

That is why the Cour de cassation cancelled the decision issued by the Court of Appeals. Now, the case is going back before the Court of Appeals for second trial. It is not the end of the road for the DELAGE mark.

© INSCRIPTA