Necessary reference (référence nécessaire)

Necessary reference is the limitation of trade mark rights that allows a third party to use another’s trade mark to designate the proprietor’s goods or services, where such use is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part. Article L. 713-6 of the French Intellectual Property Code enshrines it, in line with Article 14 of Directive (EU) 2015/2436, and Article 14 of Regulation (EU) 2017/1001 sets out the same limitation for the European Union trade mark.

The conditions of the limitation

Three conditions apply cumulatively. First, the use must serve to designate the goods or services as being those of the proprietor, and not the third party’s own goods. Second, it must be necessary, in the sense that information on the intended purpose or compatibility cannot reasonably be communicated to the public by other means: the maker of compatible cartridges, car spare parts or accessories for a given phone cannot inform its customers without naming the brand of the device. Finally, it must be in accordance with honest practices in industrial or commercial matters, which rules out any presentation suggesting a commercial connection between the third party and the proprietor, any disparagement and any unfair advantage taken of the reputation of the trade mark.

Scope

The limitation covers accessories and spare parts, compatible consumables, repair and maintenance services for branded goods, and the resale of second hand goods, where it operates alongside exhaustion of rights. It extends to lawful comparative advertising, where citing the competitor’s trade mark is by definition necessary for the comparison. It does not cover use of the trade mark as a trade mark for the third party’s goods, nor the copying of the proprietor’s logo or distinctive get up where the word mention suffices, nor the display of the trade mark in prominent lettering that overshadows the third party’s own trade mark.

Application in litigation

Necessary reference is a defence, and the burden of proof lies on the party relying on it. The debate centres on the honesty of the use, assessed in the light of the overall impression made on the consumer: the size and placement of the trade mark, the precision of the compatibility statement, the presence of the third party’s own trade mark and the absence of any copying of the proprietor’s visual codes. Excessive use tips the situation towards trade mark infringement or, where use of the trade mark is not in issue, towards free riding (parasitisme). Selective distribution and authorised repairer networks raise specific questions, since an independent repairer may describe itself as a specialist in a brand but may not hold itself out as authorised.

Key points

A third party may name another’s trade mark to indicate that its product is compatible with, intended for or adapted to the proprietor’s product, provided this is necessary and fair. A plain word mention, accompanied by the third party’s own trade mark and a clear compatibility statement, is permitted, whereas copying the logo or creating the appearance of a commercial connection is not. Each medium, packaging, website and advertisement should be checked against that overall impression.

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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.

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