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

Delegates at a conference unpicking the UK’s relationship with the UPC are hopeful of strengthened UK involvement – so should we all be
News of a litigation funder suing its co-founder and a law firm over trade secrets infringement, and a strategic hire by Womble Bond Dickinson were also among the top talking points
Managing IP’s parent company, LBG, will acquire The Lawyer, a leading news, intelligence, and data-driven insight provider for the legal industry, from Centaur Media
In major recent developments, a team of partners broke away from Taylor Wessing to form their own firm, while Kilburn & Strode made a strategic UPC hire
General Court backs Christian Archambeau in some of his challenges against his departure, but dismisses others
Morgan Lewis adds three partners with technical depth, reinforcing the firm’s strategy to bridge legal and tech expertise in patent litigation
The firm posted a 13% increase in profit as well as a rise in overall revenue
Catherine Lee, one of Managing IP’s Top 250 Women in IP 2025, discusses her ‘soft’ approach to leadership and why building a community at work is important
Transactions specialists at Paul Weiss are advising on the high-profile split of Kraft Heinz into two companies, while Skadden is also involved in the deal
Youngmin Park joins us for our ‘Five minutes with’ series to discuss learning languages, moonlighting as a drummer, and why late is better than never
Gift this article