From reputation to fraud: total invalidation of a French ‘Richard Mille’ trademark

The Paris Court of Appeal recently declared a French trademark registration for ‘Richard Mille’ entirely invalid, confirming that the filing had been made fraudulently and in disregard of an earlier, well-established sign. The decision (No. RG 24/04961, of October 29 2025) is noteworthy as it revisits the infringement of a trademark enjoying reputation and clarifies the evidentiary approach to fraudulent filings.

In November 2019, an applicant filed a French application for the verbal sign ‘Richard Mille’ covering a very broad list of goods and services across classes 7, 12, 38, and 42 of the Nice Classification. Shortly thereafter, Turlen Holding SA (Turlen), the owner of two earlier international registrations consisting of the same sign and benefiting from an extensive reputation in the field of luxury watchmaking, initiated cancellation proceedings.

In December 2020, the director general of the French intellectual property office (INPI) upheld the invalidity request only in part, considering that a link could be made between the contested trademark and the reputed earlier trademarks for a portion of goods and services. Turlen appealed, but in February 2022 the Paris Court of Appeal dismissed its claims. Turlen then lodged an appeal before the Cour de cassation, which set aside the appellate ruling in early 2024 for failure to address relevant arguments and for improperly dealing with the allegation of fraud.

Following remittal, and after further submissions, the Court of Appeal reconsidered the case and adopted a markedly different approach.

Turlen relied primarily on its long-standing use of the earlier trademarks ‘Richard Mille’ for luxury timepieces, supported by evidence of market success, international rankings, and worldwide commercial partnerships (including collaborations with Formula 1 teams and cultural institutions). It asserted that the earlier trademarks enjoy significant reputation extending beyond traditional horological circles.

Turlen contended that the contested filing attempted to exploit this prestige and would inevitably evoke the reputed sign in the minds of consumers. It further argued that the applicant deliberately adopted the identical sign without having any personal or business legitimacy and had systematically sought to register other trademarks corresponding to globally known brands. These circumstances, coupled with the absence of any genuine use intention, supported the finding of fraudulent conduct.

The INPI maintained its initial stance: while acknowledging the reputation of Turlen’s earlier trademark for watches and chronometric instruments, it argued that consumers confronted with unrelated everyday goods or specialised services would not necessarily establish a mental link with a luxury watch brand.

The Court of Appeal confirmed, consistent with established European jurisprudence, that the protection of trademarks with reputation may extend to dissimilar goods and services only where the relevant public is likely to establish a mental association between the signs. Although Turlen demonstrated particularly intensive use and international visibility for watches, the court held that the additional evidence did not suffice to broaden the scope of protection across all contested goods and services.

The court methodically reviewed individual categories for which invalidity had been previously rejected – such as kitchen appliances, gardening machinery, domestic textile equipment, architectural services, or press-related services – and found the overlap between consumer groups to be either marginal or speculative. The judges stressed that occasional media exposure, sponsorship activities, or tenuous manufacturing links were insufficient to show that ordinary consumers or specialised professional users would identify these products as somehow emanating from or being connected with Turlen.

Thus, the partial invalidity confirmed by the INPI was upheld on this ground.

Where the judgment becomes particularly significant is on the assessment of fraud. The Court of Appeal recalled that fraud is an autonomous ground supporting total invalidity and does not require that the claimant holds earlier rights in the same field. It is sufficient to establish that the filing was carried out with the intention of depriving a third party of a rightful position, or to secure an exclusionary right without any genuine commercial purpose.

Several elements were decisive in the present case:

• The identity of the signs;

• The undisputed reputation of the earlier trademark in France and throughout the EU;

• The applicant’s awareness of that reputation at the filing date;

• The extremely broad specification, with no demonstrated business activity;

• The absence of any subsequent use of the contested trademark; and

• Prior patterns of filing trademarks strongly reminiscent of other well-known brands.

Considering all these facts together, they clearly showed opportunistic and obstructive conduct. Therefore, the court found the filing to be fraudulent and ordered the complete invalidity of the French registration.

The Court of Appeal’s ruling reaffirms that demonstrating the existence of an association in the minds of the public is an essential condition for assessing harm to a trademark’s reputation. Indeed, the mere fame of an earlier trademark is insufficient, on its own, to establish such an association.

It also reaffirms that French courts are willing to treat fraudulent applications as a standalone ground justifying full invalidation, even where only partial dilution or unfair advantage would otherwise be established.

This decision provides enhanced protection for trademarks with reputation against fraudulent applicants. The ground of fraudulent registration may therefore serve as an alternative strategy for owners of trademarks enjoying reputation, particularly in cases where proving the existence of a mental association in the public is challenging.

It might also be wondered whether the use of a personal name so closely linked to a well-known watchmaker also influenced the finding of bad faith. In trademark law, the appropriation of a personal name, especially one strongly associated with a famous figure, is generally unusual and could indicate an intention to benefit unfairly from another’s reputation.