Application for a declaration of invalidity of trademarks: lack of interest in bringing proceedings
In a decision dated December 7, 2022, the French Supreme Court recalls that an economic operator who is neither sued for infringement of the trademarks subject to the application for a declaration of invalidity, nor able to justify an obstacle to the exercise of its economic activity due to the filing of the trademarks in question, does not have any interest in bringing proceedings.
In this case, the invalidity of several trademarks, including French trademarks composed of the terms “Dom Pérignon”, “Ruinart”, “Clicquot” and “Moët & Chandon” was sought.
In order to establish its interest in bringing proceedings, the applicant company relied, in particular, on infringement actions brought, in France and in the Netherlands, against it by the company owning these trademarks.
However, the infringement proceedings were based on EU or international trademarks, and not on French trademarks.
The French Supreme Court therefore dismissed the appeal and held, as did the Court of Appeal, that the applicant did not have a legitimate interest in the absence of infringement proceedings against the French trademarks including the identified terms, and in the absence of infringement of its prior rights by those trademarks.
Regarding the interest in bringing proceedings, it should be recalled that since April 1, 2020, date of entry into force of the “Trademark Package” (“Paquet Marques”), an application for a declaration of invalidity filed before the INPI does not require the demonstration of such an interest.