France’s highest court ruled in January 2016 that the use of a trademark cannot be given as a basis for justifying the non-use of another, related trademark.
Otech, a company which markets reels for agricultural irrigation systems, served a formal notice to the companies Ocmis and Irtec asking them to stop using its trademarks MICRO RAIN and BIG RAIN.
In reaction, Ocmis and Irtec brought an action against Otech for revocation of their rights in the two trademarks based on Article L. 714-5 of the French Code of Intellectual Property, which provides that
“The owner of a trademark who, without good reason, does not make genuine use of its trademark in connection with the products and services covered by the registration for an uninterrupted period of five years may have its rights revoked.”
The Court of Appeals (Pau Court of Appeals, Jan. 31, 2014, No.14/439) ruled that the rights of Otech in its French trademark registrations MICRO RAIN and BIG RAIN should be revoked for all the goods they covered.
Otech then appealed to the French Supreme Court (Cour de Cassation), claiming real and genuine use of its trademark MICRO RAIN. This claim was based on Article L. 714-5(b) of the French Code of Intellectual Property which provides that trademarks can be used in different ways as long as the distinctive characteristic is not altered. Otech is the registrant of a family of 16 trademarks, all of which include the word “rain.” It uses them for products and services in the course of trade. MINI RAIN is one such trademark and, according to Otech, this trademark does not differ from the trademark in dispute, MICRO RAIN, and it therefore deems that it does meet the use requirement.
On January 16, 2016, the Commercial section of the French Supreme Court (Cass. Com., Jan. 19, 2016, No. 14-18434)
confirmed the decision of the Court of Appeals, revoking the trademark MICRO RAIN.
Previously, there was no real predictability and stability in the decisions rendered on this question. In particular, in three decisions of March 14, 2006 (Cass. Com., Mar. 14, 2006, No. 04-10.971, No. 03-20.198, No. 03-18.732), the Supreme Court had stated that if the only difference between a trademark in use and a trademark registered but not in use consists in factors not altering its distinctive character, the latter shall not be revoked. On the contrary, other, more numerous decisions have been much stricter on trademark owners. For instance, in 2010, in a decision involving the company Abercrombie, the French Supreme Court had held that by registering as trademarks various signs forming declinations of the term “Abercrombie & Fitch,” the company had wanted to distinguish them. As a result, the use of one of them could not constitute use of the others and the trademark holder had to prove genuine use for each of its trademarks (Cass. Com., Feb. 16, 2010, No. 08-21079).
The Highest Court has taken the view of the Court of Justice of the European Union (CJEU) and applied the principle set out in the Rintisch
case (CJEU, C-553/11, Rintisch,
Oct. 25, 2012). In this decision, the CJEU had interpreted the Council directive 89/104/EEC of December 21, 1988, on the approximation of the trade mark laws of the Member States
and deemed that in the particular context of a family or a series of trademarks,
the use of a trademark could not be invoked as a basis for justifying the non-use of another trademark.
It is therefore essential to note that trademark families are excluded from the exception provided at Article L.714-5(b) of the Code of Intellectual Property. Registrants of trademarks belonging to the same family must therefore pay special attention to how they use their trademarks in order to avoid revocation of their rights.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2016 International Trademark Association