Trade mark with a reputation

A trade mark with a reputation is a registered trademark known by a significant part of the public concerned by the goods or services it designates. It enjoys extended protection: its owner may oppose the use of an identical or similar sign even for different goods or services. This protection is provided by Article L. 713-3 of the Intellectual Property Code and by the European Union Trade Mark Regulation. The trade mark with a reputation differs from the well-known mark, which is protected without registration.

The conditions for protecting a trade mark with a reputation

First, reputation: the mark must be known by a significant part of the relevant public, in a substantial part of the territory. It is assessed in the light of market share, intensity, geographical extent and duration of use, and promotional investment. Next, a link: the public must make a connection between the contested sign and the mark with a reputation, even without confusion. Finally, injury: the use of the sign must take unfair advantage of the distinctive character or the reputation of the mark, or be detrimental to them through dilution or tarnishment. These criteria were developed by the Court of Justice of the European Union and applied by the French courts. The texts can be consulted on Légifrance.

Proof and extent of protection

Reputation may be proved by any means: surveys, sales figures, advertising budgets, press articles, rankings, earlier decisions recognising it. For a European Union trade mark, reputation in a single Member State may suffice, but protection in another State requires that a commercially significant part of the public there knows the mark. Extended protection makes it possible to act against free-riding uses in distant sectors, against marks filed for other goods and against advertising uses that exploit the image of the mark.

Key points

In practice, a trade mark with a reputation is a strategic asset whose proof must be built up continuously, before any dispute. Actions based on reputation are often combined with the classican action for trademark infringement action and with Parasitism. The firm acts in these disputes as part of its practice in intellectual property.