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
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