France: Analysing the rules around bad faith in trade mark cases

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

France: Analysing the rules around bad faith in trade mark cases

Sponsored by

beau-de-lomenie.png

In France, a prior right holder cannot oppose a trade mark based on bad faith.

A nullity action on the basis of bad faith can be brought in court. Bad faith is a general course of action which is not specifically detailed in the French Intellectual Property Code. The rule "bad faith corrupts everything" means that one can always bring an action in court against bad faith behaviour and therefore against any trade mark filed in bad faith.

Bad faith also has an impact on prescription. The holder of a prior right may bring a nullity action against a trade mark based on relative grounds. However, the five years acquiescence rule does not apply when the trade mark was filed in bad faith. The same rule applies in cases of infringement.

In addition, the five year prescription for invalidity actions concerning well-known trade marks (Article 6bis of the Paris Convention) does not apply in cases of bad faith. As a result, when an application is filed in bad faith, the action of the prior right holder cannot be prescribed.

Article 5(4)(c) of EU Directive 2436/2015 states: "Any Member State may provide that a trade mark is not to be registered, or, if registered, is liable to be declared invalid where, and to the extent that the trade mark is liable to be confused with an earlier trade mark protected abroad, provided that, at the date of the application, the applicant was acting in bad faith." This Directive must be implemented in France no later than January 14 2019.

There is no information for the moment as to whether an action will be introduced in France. However, if bad faith can be proved in French territory, there is a ground for action in court. Finally, there is, up to now, no information about how nullity actions filed before the Office will be dealt with in France.

Aurélia Marie


Cabinet Beau de Loménie

158, rue de l’Université

F - 75340 Paris Cedex 07 France

Tel: +33 1 44 18 89 00

Fax: +33 1 44 18 04 23

contact@bdl-ip.com

www.bdl-ip.com

more from across site and SHARED ros bottom lb

More from across our site

Leaders at US law firms explain what attorneys can learn from AI cases involving Meta and Anthropic, and why the outcomes could guide litigation strategies
Attorneys reveal the trademark and copyright trends they’ve noticed within the first half of 2025
Senior leaders at TE Connectivity and Clarivate explain how they see the future of innovation
A new action filed by Nokia against Asus and a landmark ruling on counterfeits by South Africa’s Supreme Court were also among the top talking points
Counsel explain how they’re navigating patent prosecution matters and highlight key takeaways from Federal Circuit cases
A partner who joined Fenwick alongside two others explains what drew her to the firm and her hopes for growth in Boston
The England and Wales High Court has granted Kirkland & Ellis client Samsung interim declaratory relief in its ongoing FRAND dispute with ZTE
A UDRP decision that found in favour of a small business in a domain name dispute could encourage more businesses to take a stand in ‘David v Goliath’ cases
In Iconix v Dream Pairs, the Supreme Court said the Court of Appeal was wrong to interfere with an earlier ruling, prompting questions about the appeal court’s remit
Chris Moore at HGF reflects on the ‘spirit of collegiality’ that led to an important ruling in G1/24, a case concerning how European patent claims should be interpreted
Gift this article