Principle of speciality

The principle of speciality means that a trade mark is protected only for the goods or services designated in the registration and for those similar to them. Article L. 713-1 of the French Intellectual Property Code confers on the proprietor a property right in the trade mark « for the goods or services it designates », and Article L. 713-2 IPC confines the prohibition on use to signs used for identical or similar goods or services. The same principle governs the European Union trade mark under Article 9 of Regulation (EU) 2017/1001.

The boundaries of the monopoly

Trade mark rights do not attach to a word or a device as such, but to the relationship between a sign and specified goods or services. Two identical trade marks may therefore coexist peacefully where they designate remote goods, and the same sign may belong to different proprietors in unrelated sectors. The specification as filed sets this scope, which makes the drafting of the list of goods and services at the time of the trade mark application decisive.

The Nice Classification serves an administrative purpose only. The fact that two goods fall within the same class is not enough to establish their similarity, and two goods in different classes may be similar. The court assesses similarity by reference to the nature, intended purpose, method of use and distribution channels of the goods, and to whether they are in competition with or complementary to each other.

The exception for marks with a reputation

The principle admits one major exception, in favour of the trade mark with a reputation. Article L. 713-3 IPC, like Article 9(2)(c) of Regulation (EU) 2017/1001, allows the proprietor to prohibit the use of an identical or similar sign for goods or services that are not similar, where that use takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark. The Court of Justice of the European Union has held that this extended protection also applies where the goods are identical or similar.

Consequences in litigation

For the defence, the principle of speciality is one of the first arguments to examine. The defendant to a trade mark infringement action frequently contends that the goods at issue are neither identical nor similar, which rules out any likelihood of confusion however close the signs may be. On the proprietor’s side, an overly narrow specification exposes it to losing ground, while an overly broad one exposes it to partial revocation for lack of genuine use, which reduces protection to the goods actually marketed.

Key points

A trade mark protects a sign for specified goods or services, not the sign in the abstract. The similarity of goods is assessed concretely, regardless of the Nice classes. Only the trade mark with a reputation escapes this limit, under conditions of its own. Before any filing or any action, the registered specification should be reread and checked to ensure that the goods actually marketed appear in it.

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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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