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French Trademark Office INPI Decision of September 13, 2024: Bad Faith Trademark Filing and Its Implications

Written by Dreyfus10/02/2025

The INPI’s decision of September 13, 2024, in case NL 23-0183, addresses the critical issue of bad faith in trademark law. The cancellation of the “POMPON” trademark, which was registered to monopolize a name linked to the renowned sculptor François Pompon, underscores the misuse of intellectual property rights for undue commercial advantage. This article dissects the legal reasoning, evidence, and implications of this decision for businesses operating in intellectual property and cultural heritage sectors.

Case Summary

Background

The trademark “POMPON,” registered by a museum boutique operator, faced cancellation proceedings initiated by Dixit Arte SAS. The latter argued that the registration aimed to monopolize the name “Pompon,” associated with the renowned sculptor François Pompon, whose works are part of the public domain.

Key Arguments

At the heart of the case were allegations of bad faith. The plaintiff contended that the trademark holder sought to exploit the public domain status of François Pompon’s name by imposing licensing fees on other legitimate users. This was seen as an attempt to gain undue control over a name that should remain accessible to all stakeholders within the art and heritage sector. The registrant countered that the trademark was filed to protect the integrity of Pompon’s legacy and ensure high-quality reproductions.

Legal Framework

Establishing Bad Faith

The INPI based its decision on Article L.714-3 of the French Intellectual Property Code, which allows for the cancellation of trademarks filed in bad faith. It requires a comprehensive assessment of the registrant’s intent at the time of filing, as established by European case law. Factors such as knowledge of prior use by third parties and the broader context of the registration play a decisive role in determining bad faith.

The Role of Evidence in Establishing Intent

Key factors included the registrant’s activity as the manager of museum boutiques in Dijon, which gave him direct exposure to Dixit Arte’s products. Additionally, email correspondence proposing royalty-bearing licenses substantiated the claim that the registration was a deliberate attempt to monetize a name integral to the public domain. The registrant’s argument of safeguarding the artist’s legacy was found to lack credibility given the financial motivations reflected in the evidence.

Decision and Implications

Cancellation of the Trademark

The INPI concluded that the “POMPON” trademark was filed with the intent of creating an undue monopoly on a public domain name. By restricting access to a term essential for the reproduction and sale of François Pompon’s works, the registrant sought to exploit the trademark system in a manner inconsistent with its intended purpose.

Implications for Future Trademark Applications

This decision underscores the necessity of ensuring good faith in trademark applications, particularly in cases involving public domain elements. Businesses must exercise due diligence to confirm that their filings align with the principles of fairness and do not obstruct legitimate commercial practices. This ruling also highlights the importance of preserving access to cultural heritage symbols for all stakeholders.

Broader Lessons from the Decision

Safeguarding Public Domain Names

The decision underscores that names linked to public domain works, such as those of François Pompon, should remain freely available to stakeholders. Attempts to impose exclusivity through trademark registration risk contravening the principles of intellectual property law.

Ethical Licensing Practices

The case serves as a reminder of the importance of transparency and fairness in licensing agreements. Leveraging trademarks to extract royalties on public domain names undermines the spirit of free competition and innovation.

Conclusion

The cancellation of the “POMPON” trademark by the INPI sets a precedent against bad faith filings, emphasizing the need for ethical practices in intellectual property management. Businesses must align trademark strategies with the principles of fairness and competition.

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FAQ

What is bad faith in trademark?

Bad faith in trademark law refers to a situation where an applicant files for a trademark with dishonest intentions. This may include registering a mark solely to block competitors, exploit the reputation of an existing brand, or prevent others from using a term that should remain available in the public domain.

What is bad faith EU trademark?

In the EU, bad faith is defined under Article 59(1)(b) of the EU Trademark Regulation. It applies when a trademark application is filed with the intention of misleading, obstructing competitors, or unfairly benefiting from another party’s reputation. The European courts assess factors such as prior knowledge of third-party use, the applicant’s commercial strategy, and any attempt to abuse trademark law.

How do you cancel a trademark?

A trademark can be canceled through invalidity or revocation proceedings:

  • Invalidity: If the mark was registered in bad faith, lacks distinctiveness, or infringes prior rights.
  • Revocation: If the trademark has not been used for a continuous period of five years or has become misleading to consumers.
    Proceedings can be initiated before the relevant intellectual property office (e.g., EUIPO, INPI) or in court, depending on the jurisdiction.

How to withdraw a trademark?

A trademark can be withdrawn voluntarily by submitting a request to the relevant trademark office. The applicant or owner may request total or partial withdrawal, meaning it may apply to all goods/services or just specific ones.

How do you protect your domain name?

To protect a domain name:

  1. Register it promptly to prevent third-party claims.
  2. Monitor for potential cybersquatting using watch services.
  3. Secure trademarks corresponding to the domain name, strengthening enforcement rights.
  4. Enforce rights through legal actions, such as Uniform Domain-Name Dispute-Resolution Policy (UDRP) or national court procedures.

What are the conflicts of trademarks with domain names?

Conflicts arise when a domain name incorporates a registered trademark without authorization. Key issues include:

  • Cybersquatting: A third party registers a domain with the intent to profit from the trademark owner.
  • Trademark infringement: If a domain creates confusion among consumers, misleading them into thinking it is affiliated with the trademark owner.
  • Reverse domain name hijacking: When a company tries to obtain a domain name illegitimately by claiming false trademark rights.

Resolving such conflicts may involve legal action under UDRP, court proceedings, or negotiations with the domain holder.

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Tesla and the EUIPO Halt Trade Mark “Trolling”

Written by Dreyfus06/01/2025

In a recent decision, the EUIPO Cancellation Division declared the European trade mark “TESLA,” held since 2022 by Capella Eood, invalid on the grounds of bad faith. This ruling marks a significant victory for car manufacturer Tesla in its fight against abusive trade mark practices, often referred to as “trade mark trolling.” Here, we examine the key aspects of this landmark case.

Background and Stakes of the Case

In 2022, Tesla filed for the cancellation of the trade mark “TESLA” registered with the EUIPO by Capella Eood, a company linked to an individual notorious for “trade mark trolling” practices. The cancellation request was based on Article 59(1)(b) of the EU Trade Mark Regulation (EUTMR), which allows invalidation of a trade mark filed in bad faith.

Tesla argued that Capella Eood engaged in speculative strategies to register trade marks with the aim of blocking other businesses’ operations and extorting financial settlements. Evidence presented included examples of shell companies, delays in opposition proceedings, and strategic transfers of trade mark rights.

For its part, the trade mark holder denied the accusations of bad faith, calling Tesla’s claims defamatory and asserting that the mark was inspired by independent and unrelated sources.

Criteria Analyzed by the EUIPO to Establish Bad Faith

Under Article 59(1)(b) EUTMR, bad faith is assessed based on the applicant’s intent at the time of filing, considering honest commercial practices. The EUIPO examined this intent using several key criteria, informed by cases such as Sky and Others (C-371/18) and Koton (C-104/18 P).

  1. Motives and Context of the Filing

The contested trade mark was filed shortly after Tesla achieved international recognition, particularly following the success of the Tesla Roadster. This timing indicated that the trade mark holder was aware of Tesla’s growing reputation. Claims that the mark was inspired by a newspaper article or a CD were deemed implausible, especially since the targeted products—vehicles and accessories—matched Tesla’s offerings.

  1. History of Speculative Practices

Evidence revealed that the trade mark holder had a history of systematic filings through shell companies across different jurisdictions. These trade marks were often abandoned or withdrawn, reflecting a deliberate strategy to exploit the EU trade mark system for financial gain by creating blocking positions.

  1. Dilatory Tactics and Lack of Genuine Use

The EUIPO identified procedural delays, such as inconsistent modifications to descriptions of goods and services, aimed at stalling opposition proceedings for nearly 15 years. The holder failed to provide any evidence of genuine commercial activity linked to the mark, reinforcing the perception of a purely obstructive strategy.

  1. Awareness of Tesla’s Operations

Tesla’s products were already widely covered by the media in Austria and beyond before the filing of the contested mark. This media coverage, combined with other evidence, demonstrated that the trade mark holder was aware of Tesla’s operations and sought to capitalize on its anticipated success in the European market.

  1. Violation of Fair Practices

The EUIPO concluded that the trade mark was filed without any genuine intent to use it and with the purpose of obstructing legitimate filings. This conduct was deemed contrary to principles of good faith and fair commercial practices.

Implications of the Decision

This decision aligns with a growing body of case law aimed at curbing trade mark trolling and safeguarding fair competition. It also reinforces principles established by the Sky and Others and Koton rulings, which define bad faith as intent contrary to honest practices at the time of filing.

For businesses, this case highlights the importance of monitoring trade mark filings that could impede their operations and acting swiftly to contest abusive registrations. It also underscores the critical role of evidence—such as filing histories and dilatory tactics—in proving bad faith.

Conclusion

The EUIPO’s decision in the TESLA case is a significant step in combating systemic abuse in the trade mark domain. It underscores that commercial practices must remain fair and honest, and that the trade mark system should not be exploited for speculative purposes. For companies like Tesla, such rulings help protect their investments and reputation in the European market. Trade mark law professionals, such as Dreyfus Law Firm, remain committed to assisting clients in addressing such challenges effectively.

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2024 Retrospective: Intellectual Property and Innovation at Dreyfus

Written by Dreyfus31/12/2024

The year 2024 was marked by significant legislative developments, strategic innovations, and impactful initiatives for Dreyfus, a firm specializing in intellectual property. This retrospective highlights the key milestones, in-depth analyses, and tools developed to support businesses in a constantly evolving legal environment.

Key Articles and Legislative Developments

The firm analyzed several major developments in 2024, including:

  1. New European Measures for Sustainable Packaging: Adopted by the European Parliament, these measures aim to reduce packaging waste and promote eco-friendly alternatives. Practical recommendations were shared to help businesses comply with these new requirements.
  2. Modernization of the Designs and Models Regime: The “Designs and Models Package”, effective May 1, 2025, introduces significant adjustments to enhance the protection of creative works within the European Union. The firm’s articles explained these changes and their impact on creative businesses.
  3. Monitoring Brands on Social Media: A critical topic in the digital age. The firm explored advanced strategies to counter online intellectual property infringements and introduced new services for monitoring domain names and company branding.

Modernized Services and Tools

To address clients’ growing needs, the firm expanded its services in:

  1. Monitoring of Brands, Domain Names, Social Media, and Designs & Models: Enhanced vigilance to protect your intangible assets in an increasingly complex environment.
  2. Tailored Support: The firm developed customized solutions for startups and emerging businesses, offering tools suited to their limited resources.

Events and Internationalization

The firm actively participated in international conferences and organized webinars on various topics, consolidating its leadership role in intellectual property.

Looking Ahead to 2025

For 2025, the firm plans to continue exploring new technologies, introduce training tailored to clients’ specific needs, and strengthen its international collaborations.

We wish all our clients, partners, and collaborators an excellent year 2025, filled with success and serenity. May this new year be marked by positive achievements and lasting peace worldwide.

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Case Study on Trademark Fraud Allegations in France: Hot Couture’s Pierre Cadault from Netflix Hit Series “Emily in Paris”

Written by Dreyfus18/11/2024

Breaking Down INPI’s Landmark Decision: A Tale of Two Industries

 The French National Institute of Industrial Property (INPI) recently addressed an intriguing trademark dispute that caught the entertainment industry’s attention. The case, involving a character name from the popular Netflix series “Emily in Paris,” has illuminated crucial aspects of bad faith trademark registration claims in the entertainment sector. The dispute centered on a trademark registration filed for cosmetics under Class 3, strategically positioned two months after the series premiere. The contested trademark is related to a fictional character portrayed as an extravagant couturier in the series, creating an unexpected intersection between beauty, fashion, and trademark law.

 

The INPI’s investigation delved deep into the chronology of events. Their analysis revealed “insufficient evidence” to establish the trademark holder’s awareness of prior use at the filing date. Despite the character “Pierre Cadault” prominently featured in the series as a renowned fashion designer, the evidence failed to demonstrate that the name “Cadault” alone had achieved meaningful recognition in France during the crucial initial months following the show’s release.

 

The art of proving bad faith: Beyond surface-level analysis

 A pivotal element in the INPI’s decision rested on the distinction between industries. While acknowledging the subtle connection between high fashion and cosmetics, the INPI determined that cosmetics operate in a separate commercial sphere from haute couture. This industry differentiation substantially weakened any presumed connection between the character’s name and the registered trademark category.

 

The INPI emphasized a fundamental principle: “mere awareness” of prior use does not constitute fraudulent intent. The burden of proving bad faith registration demands concrete evidence that the filing was specifically calculated to prevent a third party from utilizing a necessary business identifier. The timing of the registration, occurring two and a half months post-series launch, combined with the absence of communication between parties, significantly influenced the final determination.

 

The INPI’s reasoning revealed a subtle understanding of practical trademark enforcement. The notable absence of any legal action by the trademark holder to prevent the character’s name use in the series substantially undermined claims of malicious intent. This passive approach contrasted sharply with typical bad-faith scenarios, where trademark holders actively pursue cease-and-desist measures or legal proceedings.

 

A framework precision for evaluating bad faith

 The decision carried significant implications for the intersection of entertainment properties and trademark rights. The INPI acknowledged that while obtaining an injunction to prevent character name use would be legally challenging, potential conflicts could arise if Viacom pursued character-based cosmetic products. This nuanced observation highlights the complex relationship between entertainment content and commercial trademark rights.

 

This decision clarifies the framework for assessing bad faith in entertainment-related trademark registrations. The ruling emphasizes the critical importance of substantial evidence, industry context, and practical commercial implications. Future disputes will likely reference this decision’s “balanced approach” to evaluating trademark validity in the entertainment sector.

 

Conclusion

 The INPI’s thorough analysis offers valuable guidance for navigating the complex landscape of entertainment property rights and trademark protection. The decision underscores the necessity of considering both immediate and potential future commercial applications when evaluating trademark registration intent. This forward-looking perspective ensures that trademark protection serves its intended purpose without unduly restricting creative expression in the entertainment industry.

 

The ruling’s subtle approach to analyzing bad faith claims provides a robust framework that balances the legitimate interests of trademark applicants with those of entertainment property rights holders. As the entertainment industry continues to evolve, this decision will serve as a crucial reference point for resolving similar disputes, ensuring fair and practical outcomes in the dynamic intersection of entertainment and trademark law.

 

 At Dreyfus Law Firm, we recognize that the entertainment and media landscape present unique challenges for trademark protection, as evidenced by the recent “Emily in Paris” case. Our expertise lies in navigating these complex intersections between creative content and trademark rights. We guide entrepreneurs and companies through the intricate process of establishing and defending their trademark rights, particularly when industries overlap, as we saw with the fashion and cosmetics sectors in this case. “Bad faith claims” require sophisticated analysis and compelling evidence, but they are insufficient to demonstrate prior use or knowledge. Dreyfus Law Firm excels at building comprehensive strategies that consider both immediate concerns and future commercial implications. Our team prides itself on helping clients understand the practical aspects of trademark enforcement while ensuring their intellectual property assets are properly protected across multiple industries and jurisdictions.

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Securing Creations: The Blueprint to French Intellectual Property Dispute Resolution

Written by Dreyfus05/11/2024

French intellectual property (IP) law, deeply rooted in civil law tradition, is designed to ensure robust protection and enforcement of IP rights. The French legal framework for intellectual property disputes encompasses civil and criminal remedies, specialized courts, and a highly structured procedural system. This article delves into the intricacies of IP dispute resolution in France, focusing on trademark enforcement, litigation procedures, available remedies, and alternative dispute resolution (ADR) mechanisms while highlighting the essential balance between civil and criminal liabilities in IP infringement cases.

Trademark Enforcement in French Law

Trademark protection in France is governed by the Intellectual Property Code, which outlines the legal avenues available to trademark owners in cases of infringement. The law offers a dual approach whereby acts of infringement can be classified as both criminal and civil offenses. In most cases, trademark disputes are handled by civil courts. However, certain violations may lead to criminal prosecution.

 

For criminal liability, the stakes are high. Trademark infringement can result in substantial penalties, with fines reaching up to 400,000 euros and imprisonment for up to four years for individuals. Legal entities may face fines of up to 2 million euros. While these penalties underline the seriousness with which France views IP violations, the majority of trademark disputes remain within the civil court system, with ten designated courts spread across France, including key jurisdictions like Paris, Marseille, and Lyon.

 

Procedural Pathways in IP Disputes

A trademark infringement lawsuit in France typically begins with a writ of summons, a procedural document laying out the nature of the dispute, legal arguments, and remedies sought. The summons must also contain evidence of the claimant’s attempt to resolve the issue amicably before resorting to litigation. Once filed, both parties are required to be represented by legal counsel throughout the proceedings.

 

The civil litigation process is notably distinct in France due to the absence of a discovery phase. Instead, a claimant can request a search and seizure procedure commonly referred to as “saisie-contrefaçon.” This powerful mechanism enables the claimant, with the assistance of a bailiff, to collect evidence of infringement, including seizing goods and related documents. To initiate this procedure, the claimant must first obtain court authorization, which is granted upon showing a reasonable suspicion of IP infringement. Once the “saisie-contrefaçon” is completed, the claimant has a strict timeline, typically 20 business days or 31 calendar days, to file the main proceedings, failing which the evidence seized may become inadmissible.

 

French courts also adhere to a stringent timeline for rendering decisions in first-instance proceedings, with judgments typically issued within 24 months. This relatively predictable timeframe particularly appeals to right holders seeking timely enforcement of their rights.

 

Burden of Proof and Remedies

As in most civil legal systems, the burden of proof in French IP law lies with the claimant. This responsibility extends to establishing both the occurrence of the infringing act and the likelihood of continued or imminent infringement. In some cases, particularly when seeking provisional relief, such as a preliminary injunction, the claimant must demonstrate that the trademark violation appears likely or is about to occur.

 

French courts offer both provisional and permanent remedies. Provisional remedies can be awarded during injunctive proceedings and may include an order prohibiting further infringement, the seizure of suspect goods, or a requirement for the infringer to provide financial guarantees. Permanent remedies are granted once the court rules on the merits of the case, which may involve the destruction or recall of infringing goods, as well as orders to cease all infringing activities. Additionally, monetary remedies are calculated based on the economic harm caused to the trademark owner, the profits made by the infringer, and any moral damages. However, French law does not provide for punitive damages, and courts retain discretion when determining the final award.

 

Alternative Dispute Resolution: A Growing Trend

While litigation remains the primary method for resolving IP disputes in France, alternative dispute resolution (ADR) techniques, such as mediation and conciliation, are slowly gaining traction. The French government and courts are actively encouraging the use of ADR as a cost-effective, confidential, and flexible means of resolving IP conflicts. One of the key advantages of ADR lies in its ability to preserve business relationships while offering swift resolution, as parties can enter into ADR before or after litigation has commenced.

 

That said, ADR, in the context of intellectual property disputes, carries certain limitations. For instance, rights holders seeking immediate relief, such as a preliminary injunction or seizure order, must rely on the courts, as ADR mechanisms do not provide such enforceable interim measures. Despite these limitations, the growth of ADR signals a shift toward more collaborative methods of resolving trademark and other IP disputes in France.

 

Conclusion

French intellectual property dispute resolution offers a comprehensive, well-structured system that balances civil and criminal liabilities, provides robust enforcement mechanisms, and promotes alternative means of conflict resolution. Trademark owners benefit from clearly defined procedural rules, access to specialized courts, and a range of both provisional and permanent remedies. As the role of ADR continues to grow, the flexibility of the French system ensures that right holders can tailor their enforcement strategies to the unique demands of each case. Through a combination of litigation, administrative enforcement, and ADR, France remains a key jurisdiction for the protection of intellectual property rights.

 

With our team’s mastery of French Intellectual Property Law Dispute Resolution, trademark enforcement, civil and criminal litigation, procedural efficiency, and the nuanced application of search and seizure procedures “saisie-contrefaçon”, Dreyfus Law Firm provides clients with a decisive edge in safeguarding their intellectual property rights. The firm’s intimate understanding of the French legal landscape and its strategic use of provisional and permanent remedies ensure swift and effective resolution of IP disputes. Companies seeking to protect their valuable assets can trust Dreyfus Law Firm to deliver robust defense strategies, minimize litigation costs, and, where appropriate, navigate alternative dispute resolution methods to achieve favorable outcomes. Their expertise in this complex area of law makes them the optimal choice for businesses aiming to secure their intellectual property in the competitive French market.

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