Principle of territoriality

The principle of territoriality means that trade mark rights have effect only in the territory for which they were granted. A French trade mark registered with INPI protects its proprietor in France, a European Union trade mark protects it throughout the Member States, and an international trade mark is valid only in the designated countries that have not refused protection. The Paris Convention enshrines the independence of trade marks registered in the various countries of the Union, each title living and dying under its own law.

The independence of national titles

Each State grants, examines and invalidates its trade marks under its own rules. The invalidation of a trade mark in one country has no bearing on the corresponding trade mark registered elsewhere, and use made abroad is not, as a rule, sufficient to maintain a French trade mark threatened with revocation. A proprietor operating in several countries must therefore build a portfolio of titles, either through separate national filings or through the international route of the Madrid Protocol, relying on the six month priority right opened by the Paris Convention.

The European Union trade mark

The European Union trade mark shifts the principle without abolishing it. Regulation (EU) 2017/1001 gives it a unitary character: it has the same effects throughout the Union, it may be registered, transferred, declared invalid or revoked only for the Union as a whole, and genuine use in part of the territory may suffice to maintain it. The relevant territory has simply become that of the Union. By contrast, the European Union trade mark has conferred no rights in the United Kingdom since its withdrawal, and proprietors there hold cloned trade marks created on that occasion.

Effects in infringement matters

Territoriality delimits the acts capable of constituting trade mark infringement. Only uses made within the territory of protection are caught, which raises delicate questions for online offers. The Court of Justice of the European Union holds that a website accessible from the territory is not enough, and that it must be ascertained whether the offer is targeted at consumers in that territory, in the light of indicators such as language, currency, delivery areas or the statements on the site. Territoriality also underpins the rule of exhaustion of rights, confined to the European Economic Area, which allows the proprietor to oppose the import of goods put on the market outside that area.

Key points

A trade mark protects only where it is registered, and each title is governed by the law of the country that granted it. The European Union trade mark extends that territory to the whole Union without making it a worldwide trade mark. Before launching a product or an online shop, the countries of operation should be mapped, the titles held in each checked, and filings made where they are lacking.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

Intellectual property attorney · Tell us about your situation