France: National trade mark rights should be maintained

Managing IP is part of Legal Benchmarking Limited, 4 Bouverie Street, London, EC4Y 8AX

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

France: National trade mark rights should be maintained

Sponsored by

beau-de-lomenie.png

Claims of seniority of national trade marks for European marks have the effect of allowing owners, if they cease to maintain local trade marks, to continue benefitting from the same rights they would have had if their national trade mark had been maintained.

In a decision on September 26 2018, the French Supreme Court ruled on a dispute concerning the non-use period to be taken into account when the national trade mark founding the claim of seniority has been abandoned.

In this case, SCEV Champagne Gallo, which was created on April 8 2002, was using the Gallo sign as its corporate name to market champagne. It was sued for trade mark infringement by the owner of a European trade mark GALLO dated April 1 1996 which claimed the seniority of a French trade mark dated August 30 1968 for Classes 32 and 33. On October 6 2015, in a decision issued by the judges of the Paris Court of Appeal, SCEV Champagne Gallo obtained a revocation of the French trade mark due to non-use with effect from August 30 1973 and the cancellation of the European trade mark filed later than the date of the rights SCEV Champagne Gallo held over its corporate name.

The Supreme Court rejected the appellant's argument that, in order to assess the merits of a cancellation action filed against a national trade mark whose seniority is claimed, it is appropriate to treat that trade mark as if it were still in force through the European trade mark: the use of a European trade mark did not save the national registration whose seniority was claimed, and which was not used at the time it was abandoned as a national registration.

Thus holders of national rights should not abandon them even if they claim seniority from them in European trade marks.

marie.jpg

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

The UK-India trade deal doesn’t mention legal services, showing India has again failed to agree on a move that could help foreign firms and local practitioners
Eva-Maria Strobel reveals some of the firm’s IP achievements and its approach to client relationships
Lateral hires at Thompson Hine and Pierson Ferdinand said they were inspired by fresh business opportunities and innovative strategies at their new firms
The launch of a new IP insurance product and INTA hiring a former USPTO commissioner were also among the top talking points this week
The firm explains how it secured a $170.6 million verdict against the government in a patent dispute surrounding airport technology, and why the case led to interest from other inventors
Developments of note included the court partially allowing a claim concerning confidentiality clubs and a decision involving technology used in football matches
The firm said adding capability in the French capital completes its coverage of all major patent litigation jurisdictions as it strives for UPC excellence
Marc Fenster explains how keeping the jury focused on the most relevant facts helped secure a $279m win for his client against Samsung
Clients are divided on what externally funded IP firms bring to the table, so those firms must prove why the benefits outweigh the downsides
Rahul Bhartiya, AI coordinator at the EUIPO, discusses the office’s strategy, collaboration with other IP offices, and getting rid of routine tasks
Gift this article