Validity of the use of nominees before the French Office: when inactive trademarks are dethroned by ghost lawyers
On 18 September 2024, the Paris Court of Appeal handed down a ruling upholding the decision of the Director General of the French Industrial Property Office (INPI) declaring the Trademark BASTILLE No. 144101016 cancelled for non-use.
This decision is part of a post-2019 reform context, which has opened the possibility of cancellation actions for non-use before the INPI. In the present case, the cancellation action had been filed via a lawyer acting as nominee.
This practice can be of considerable interest to clients wishing to remain anonymous in their actions against third parties or competitors.
Validation by the Court of Appeal of a nominee as plaintiff of a cancellation action for non-use
The trademark in question, registered in 2014, designated, among other things, goods in Class 16, such as printing products and newspapers. However, an application for cancellation action for non-use has been filed with success.
The owner of the trademark challenged before the Paris Court of Appeal the decision issued by the Office, putting forward two arguments.
Firstly, he alleged malice by accusing the plaintiff in the cancellation action of acting on behalf of his former partner. Secondly, he claimed the existence of proper reasons for non-use, linked to copyright disputes concerning a magazine entitled BASTILLE.
In response, the Court upheld the INPI‘s initial decision, rejecting the owner’s arguments.
The Court of Appeal pointed out that the law does not require proof of a personal interest to bring a cancellation action for non-use before the INPI. Justifying itself on the grounds of general interest, it inferred from the provisions of the Intellectual Property Code that “the law grants very broadly the right to bring a cancellation action of a trademark for failure to use it before the Director General of the INPI to any natural or legal person who is granted, regardless of their status and without having to prove a personal interest, the right to exercise this right”.
The Court upheld the strategy of using a nominee lawyer to file the application, stressing that this “straw man” practice, although frequently used, particularly before the EUIPO, is not abusive.
This decision legitimizes the use of nominees to bring trademark cancellation actions for non-use. It therefore makes it possible to better guarantee free competition by broadening the scope for action against unused trademarks.
Reminder of the “proper reasons for non-use” concept
The Court also recalled that copyright and trademark rights are independent. While copyright disputes may have arisen over the BASTILLE magazine, they did not prevent the owner from using its trademark for other products or services covered by its registration.
The owner of the BASTILLE trademark, who didn’t prove any use of the said mark between 2016 and 2021, nor justify any proper reasons for such non-use, faced confirmation of the cancellation action of its trademark.
Conclusion
Although there is nothing in French law to prohibit cancellation actions for non-use filed by a nominee, and this practice has long been used before the EUIPO, this decision of the Paris Court of Appeal is the first to validate the practice of a nominee. In future, in France, we will be able to allow our clients to retain their anonymity, when this proves strategic, in order to defend their rights.
Jean-Charles NICOLLET
European Trademark & Design Attorney – Partner
Malaurie Pantalacci
European Trademark & Design Attorney – Partner
1) Paris Court of Appeal, Pôle 5 – Chamber 1, September 18th, 2024, no. 23/04582