FRAUDULENT TRADEMARK FILING
Fraud that may affect the filing of a trademark has, for lack of a legal definition, been defined by case law and doctrine (1). The victim of a fraudulent deposit has various remedies to claim their rights (2).
1. Lack of legal definition of trademark fraud
Trademark fraud is not defined either in French law or in Community law.
French law only considers this concept in the context of the claim action defined in Article L.712-6 of the Intellectual Property Code, merely distinguishing it from the violation of a legal or contractual obligation.
Regulation (EC) No. 207/2009 of 26 February 2009 on the Community trade mark and Directive 2008/95/EC of 22 October 2008, approximating the laws of the Member States relating to trade marks, do not provide any more elements for defining this concept and merely refer to the “bad faith” of the applicant.
French jurisprudence and doctrine have therefore endeavoured to define this concept.
The Paris Court of Appeal was able to define fraud as the act of “filing – a trademark – with the sole intention of unduly harming and/or appropriating the benefit of a transaction legitimately undertaken or obstructing it by opposing the ownership of the fraudulently obtained trademark” (CA Paris, February 23, 2000).
The Court of Cassation has indicated that”a trademark application is tainted with fraud when it is made with the intention of depriving others of a sign necessary for its activity” (Cass.com, April 25, 2006, appeal No. 04-15641).
Finally, the fraud that can affect a trademark registration is characterized by two elements:
– the applicant’s knowledge of the rights or previous use that it infringes;
– the depositor’s intention to harm.
Proof of fraud must be provided by the person invoking it. In particular, he must demonstrate the fraudster’s knowledge of the prior rights in contempt of which he filed the trademark. The intent to harm is inferred from this knowledge.
2. The possible remedies of the victim of the fraudulent deposit
2.1. Under French law, the victim of fraud has two possible remedies: the claim action, based on Article L.712-6 of the Intellectual Property Code, and the trademark invalidity action, based on the general theory of fraud.
The claim action will allow the victim to be recognized as the owner of the trademark by benefiting from the filing date made by the fraudulent applicant. Article L.712-6 of the Intellectual Property Code provides in effect “If a registration has been requested either in fraud of the rights of a third party, […], the person who considers that he has a right to the trademark may claim his property in court.»
If the victim of fraud does not wish to become the owner of the fraudulently registered trademark – which may be the case when the registration is made in a form that does not suit him – he has the possibility to sue for invalidity of the trademark.
2.2. For Community trade marks, the victim of fraud will not be able to claim ownership of the trade mark.
It can only act for the invalidity of the trademark against the applicant in “bad faith”. The fraudulent filing may also constitute a ground for opposition to an application for registration when it has been made by the agent or the proprietor of the mark without the agreement of his principal.
