Trademark lawyer in France: choose, use and defend your brand.

The proprietor of a trademark is the person in whose name it was registered, under Article L. 712-1 of the CPI. Where the manager alone files the name of the shop sign used by their company, they become the proprietor, and the company is merely a user for as long as no contract governs the position. In the event of a falling-out or a sale of the business, this mismatch weighs heavily. The company may claim the mark if the filing was made in fraud of its rights, but Article L. 712-6 limits the action to five years after publication, except where the applicant acted in bad faith. Proof of fraud remains demanding: in 2023, the Paris court of appeal held that “Mere knowledge of the earlier right or simple negligence is not enough to establish bad faith; an intention to harm the proprietor of earlier rights must also be shown” (our translation) (CA Paris, pôle 5 ch. 1, 19 April 2023, No. 21/06272). Since bad faith was not established, the company's request for transfer was dismissed as time-barred, and the operating companies were held liable for infringement towards the director who held the mark. Since then, the Court of Cassation has clarified that bad faith is assessed on objective indicia gathered at the filing date and that it “does not require, in order to be established, that a particular third party be targeted” (our translation) (Cass. com., 13 November 2025, No. 24-14.355). The firm therefore checks, as soon as the company is created or on a fundraising, who actually holds the mark, and then proposes a suitable written assignment or licence.

Registration gives a right in the company name, but that right is not equivalent to a trademark. It allows the company to oppose a later mark, or to seek its nullity, only if the public risks confusing the two signs, as provided by Article L. 711-3 of the CPI, 3°. The Court of Cassation accepted this for the benefit of regional companies whose acronym had been filed as a trademark by a sister company. Under the earlier wording of the Code, it held that “the proprietor of an earlier right may bring an action for nullity of the registered mark if there is a risk of confusion in the mind of the public, even where the proprietor of the challenged mark holds a right older than that of the third party challenging it” (our translation) (Cass. com., 10 January 2024, No. 22-21.716). This protection is assessed by reference to the activities actually carried on. It does not allow a trademark infringement action against a competitor who uses the same name for related products, but wrongdoing by that competitor may support an unfair competition action under Article 1240 of the French Civil Code (Code civil). The firm therefore examines whether the company name is sufficient for the current business, or whether a filing is needed before a geographic expansion, a new range or the arrival of investors.

A shop sign, trade name or domain name can stand in the way of a later trademark, but only if it is known beyond a local setting and the public risks confusing the signs, under Article L. 711-3. Proving that reach is often difficult for a neighbourhood business. In a dispute concerning a European Union trademark, the Paris judicial court (tribunal judiciaire) held that the trader relying on its earlier signs did not show that they had any reputation beyond the local: “Plein Tubes provides no evidence that it enjoys a recognition extending beyond the local setting” (our translation) (TJ Paris, 3e ch. 3e sect., 19 March 2025, No. 22/05128). Examining nullity under the provision in force at the time of the 2017 filing, the court dismissed the application and held the trader liable for infringement, with a ban on using the sign for the goods covered by the mark, even though it relied on use of the name since 1986. Article L. 713-6 nevertheless preserves earlier use of a sign of local reach, within the limits of the territory where it is recognised. The firm assesses with you the invoices, the customer base outside the town and the online visibility before choosing between negotiation, defence or a prompt filing.

A descriptive name reassures the customer because it explains what is being sold, but it protects the business poorly. Article L. 711-2 of the CPI excludes signs that merely describe a characteristic of the product, unless use has made them distinctive. Even where the registration survives, the protection remains narrow. In a dispute concerning a European Union trademark, the Paris court of appeal upheld the sign but rejected infringement, holding that the consumer, “given the weakly distinctive character of all the word elements contained in the signs at issue, will turn their attention to the graphic elements of the signs” (our translation) (CA Paris, pôle 5 ch. 1, 11 June 2025, No. 23/17122). In that case, very similar word signs were able to coexist, given their weak distinctiveness and the differences in structure and overall presentation. For an SME, choosing an arbitrary or suggestive term avoids this trap and makes later defence easier. The firm can review several name options against the goods concerned before the commercial materials are printed.

Article L. 714-5 of the CPI penalises the absence of genuine use for five years, for each product or service covered, with revocation. Article L. 716-3-1 places the burden of proving use on the proprietor, who may do so by any means. Plans, prototypes and presentations are not always enough. The Versailles court of appeal upheld the revocation of a perfume trademark, finding that the documents produced “do not make it possible, in the absence of any evidence of genuine availability of the products to the public, to characterise genuine use of the mark” (our translation) (CA Versailles, ch. com. 3-1, 5 March 2025, No. 23/05640). The health difficulties relied on were not accepted as proper reasons for non-use. An SME is therefore well advised to keep, every year, invoices, catalogues, dated website pages and advertisements showing the mark on the products actually sold. The firm can organise this filing by product and by period, so that the evidence is ready the day a competitor applies for revocation before the INPI.

The defendant in an infringement action may require the proprietor to prove genuine use of its mark during the five years preceding the claim, for the goods relied on. Failing that, and unless there are proper reasons, the action is inadmissible under Article L. 716-4-3 of the CPI. The Paris judicial court applied this rule to real estate services, recalling that “Genuine use of the mark must be established for each of the goods or services covered by its registration and targeted by the infringement claim” (our translation) (TJ Paris, 3e chambre 1re section, 18 December 2025, No. 23/13626). A simple sales brochure was not enough, and the mark was also declared revoked for all goods and services. The action brought to protect the name therefore led to its loss. Before issuing a writ of summons, the firm checks the evidence of use product by product and assesses the risk of a counterclaim. It may then advise limiting the action to the goods actually used, or basing the claim on another right, such as unfair competition.

Under Article L. 714-6 of the CPI, the proprietor loses its rights where the mark has become, through its own conduct, the common designation of the product in the trade. The proprietor's conduct includes its inaction in the face of generic uses. The Court of Cassation approved the revocation of a mark designating multi-sport courts, noting that “through its inactivity, Tennis d'Aquitaine contributed to the degeneration of its mark” (our translation) (Cass. com., 13 November 2025, No. 24-14.449). The proprietor did affix the ® symbol and had sent three formal notices, which the judges found insufficient given the many uses identified. This risk mainly concerns SMEs that have created a new product and whose name took hold before the competition. The response must be regular and measured: written reminders to distributors, requests for correction to publishers and local authorities, selective actions where the use persists. The firm can draw up a record of uses and prioritise the steps to take.

A filing made in bad faith is a ground of nullity under Article L. 711-2, 11°, and Article L. 712-6 gives a claim to ownership to anyone who considers they have a right in the mark. In a case concerning closures, the Court of Cassation quashed the judgment that had ruled out bad faith on the part of a company that had filed a sign already used by a third party. It held that “bad faith does not require, in order to be established, that a particular third party be targeted” (our translation) (Cass. com., 13 November 2025, No. 24-14.355), and criticised the judges for not examining whether the applicant intended to use the mark. The wish to protect a family name was not, on its own, enough to rule out bad faith. For an SME, the evidence rests on objective indicia gathered at the filing date: knowledge of earlier use, absence of use, later formal notices. The firm reconstructs this timeline and chooses between nullity, a claim to ownership and negotiating an assignment.

Yes, beyond five years of knowing tolerance. Articles L. 716-2-8 and L. 716-4-5 of the Intellectual Property Code bar the nullity action and the infringement action against a later registered mark whose use has been tolerated for five consecutive years, except where the filing was in bad faith. The decisive question then becomes the date on which the proprietor learned of that use. In a school supplies case decided under the earlier provision, the Court of Cassation held that “Proof that the proprietor of the earlier mark knew of the use of the later mark after its registration may result from general knowledge, in the economic sector concerned, of such use” (our translation) (Cass. com., 5 June 2024, No. 23-15.380). The presence of the products on the same supermarket shelves was enough to establish that knowledge, and the proprietor of the earlier mark lost its action. An SME that discovers a similar sign must therefore record the date of its discovery and decide quickly how to react. The firm can help you weigh a coexistence agreement, opposition, nullity or an action.

The temptation is strong to write to resellers to encourage them to withdraw the products at issue. The risk is real: informing third parties of an infringement that no judge has yet found can make the author liable under Article 1240 of the French Civil Code (Code civil). In a case concerning copyright, the Court of Cassation held that “the mere fact of informing third parties of a possible infringement of those rights constitutes disparagement of the products alleged to infringe” (our translation) (Cass. com., 23 September 2026, No. 22-23.833). It quashed the judgment that had considered the letters sent to the targeted company's partners to be legitimate. That decision does not directly concern trademarks, but it calls for caution in any approach to a competitor's customers. A formal notice sent to the copier alone remains the ordinary route. Before any contact with distributors, the firm examines the strength of the rights and the risk of disparagement, because a measured tone is not enough to rule out that risk while no decision has found the infringement.

Yes, where the competitor's conduct is wrongful. An action for unfair competition or parasitism rests on Article 1240 of the Civil Code and not on an exclusive right. The Court of Cassation recalls that “economic parasitism is a form of disloyalty, constituting wrongdoing, which consists, for an economic operator, in placing itself in the wake of another in order to profit unduly from its efforts, its know-how, its acquired reputation or its investments” (our translation) (Cass. com., 18 March 2026, No. 24-17.016). In that same judgment, it now held that such claims pursue the same ends as the infringement action where they rest on the same facts. A party whose infringement action was rejected for lack of an exclusive right, here because its trademarks had been annulled, can therefore bring a parasitism claim based on the same facts for the first time on appeal; the case was referred back to the Versailles court of appeal. The two actions may also be combined if they concern distinct facts: the Court held that “Facts committed in different periods are distinct facts” (our translation) (Cass. com., 13 November 2025, No. 24-14.355). The firm can build the writ of summons by distinguishing from the outset the acts that fall under trademark law from those that fall under wrongdoing.

Article L. 716-5 of the CPI reserves to the INPI applications for nullity based on absolute grounds and on several earlier rights, notably a trademark, a company name or a shop sign, as well as applications for revocation for non-use or degeneration. Other actions, and in particular infringement, fall to the specialised judicial courts designated by decree. The court again becomes exclusively competent for nullity or revocation where those applications are connected to another claim within its jurisdiction, notably an infringement or unfair competition action, or where evidentiary, interim or protective measures ordered to stop an infringement of the trademark are being carried out before an action on the merits is brought. An action for nullity is subject to no limitation period under Article L. 716-2-6, subject to tolerance and to the five-year period running from registration imposed on the proprietor of a well-known mark, except where the filing was in bad faith (Article L. 716-2-7). For an SME, the choice between the INPI and the court therefore depends on the ground relied on and on the other claims brought or contemplated. The firm examines the ground available and the most suitable procedural route.

Infringement may be proved by any means. Article L. 716-4-7 of the CPI also allows an infringement seizure (saisie-contrefaçon) to be obtained from the judge on application: a detailed description or actual seizure of the products and documents, by a court bailiff (commissaire de justice), who may be assisted by an expert. If the action on the merits is not brought within the regulatory period, the seizure is annulled at the request of the person seized. As to loss, Article L. 716-4-10 requires the judge to take separate account of losses and lost profits, non-pecuniary loss and the infringer's profits. Alternatively, and at the request of the injured party, the judge may award a lump sum higher than the royalties that would have been due, without excluding compensation for non-pecuniary loss. In the closures case already cited, the Court of Cassation left it to the lower courts to assess, in their sovereign discretion, non-pecuniary loss including damage to image, under unfair competition and in the absence of proven loss, while quashing the infringement award. The firm therefore gathers dated reports, test purchases and sales data to quantify each head of loss before acting. A serious assessment from the outset also makes it possible to weigh the benefit of a settlement against the cost of lengthy proceedings.