Use in the course of trade

Use in the course of trade is the first condition of any infringement of a trade mark. Article L. 713-2 of the French Intellectual Property Code prohibits the use of an identical or similar sign « in the course of trade », and Article 9 of Regulation (EU) 2017/1001 likewise makes the exercise of the exclusive right subject to use of that kind. Outside the course of trade, the use of a sign reproducing a trade mark falls outside trade mark law, even though it may come under other legal bases.

The notion

The Court of Justice of the European Union holds that use takes place in the course of trade where it occurs in the context of a commercial activity with a view to economic advantage and not as a private matter. The criterion is functional and broad. It requires neither trader status, nor a habitual activity, nor the making of a profit. The sale by a private individual of a few second hand items on an online marketplace is in principle a private matter, whereas repeated and organised sales, by their volume, frequency or presentation, move into the course of trade. Use by an association or a public body is not excluded where it forms part of an economic activity.

The acts of use covered

The Intellectual Property Code, following Directive (EU) 2015/2436, sets out a non exhaustive list of acts of use that may be prohibited: affixing the sign to goods or their packaging, offering or placing goods on the market or stocking them for those purposes, importing or exporting goods, using the sign as a trade name or company name, using it on business papers and in advertising, and using it in unlawful comparative advertising. Preparatory acts relating to packaging, labels or authentication features are caught where there is a risk that they will be used for infringing goods. Goods from third countries in transit bearing an identical trade mark may also be stopped, unless it is proved that the proprietor would not be entitled to prohibit their marketing in the country of final destination.

Uses outside its scope

Private use, use for information or criticism, artistic or parodic use and use in public debate do not in principle take place in the course of trade, which rules out trade mark infringement in favour, where appropriate, of civil liability or press law. The boundary is delicate for mixed uses, such as an activist website selling merchandise or a paid influencer. A technical intermediary, such as a host or a referencing service provider, does not itself use the sign in the course of trade, even if it enables its customers to do so, which brings into play the regime of hosting provider liability.

Key points

Trade mark rights catch only uses that form part of a commercial activity aimed at economic advantage, as opposed to the private sphere, and not the mere act of saying or writing a sign. The list of acts of use is broad and includes advertising, importation and preparatory acts. Before acting, characterise the disputed use, since a private or purely informative use requires a change of legal basis.

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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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