Question Q214 RAPPORT - AIPPI

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SUMMARY
I. Analysis of current law and case law
In France, the protection against the risk of trademark dilution, as an autonomous violation
of trademark rights that is independent of trademark infringement, is considered as
protection against the violation of the distinctive character of a reputed or well-known
trademark. This occurs when the attractive force of the trademark is weakened.
Admissibility to claim protection against dilution, and thus proving repute or fame, is an issue
of fact that is assessed by the Courts discretionarily, taking account of all relevant elements.
The prior trademark owner must show that, at the time of the events in dispute, a significant
part of the relevant public (even in the case of a market niche) in a substantial part of the
territory was aware of its trademark to a certain degree. What counts is public awareness,
but it is not necessary that the trademark be used in the territory where protection is sought.
To punish a violation of the distinctiveness of a reputed or well-known trademark, case law
requires that – in addition to repute or fame – the plaintiff evidence:
i - the existence of a link between the signs in dispute, which supposes a certain degree of
similarity between the signs, but not necessarily a likelihood of confusion,
ii - the damage caused in terms of the distinctive character, or at least a serious risk of
damage. In practice, such damage is difficult to prove.
The system of protection against the risk of dilution allows to challenge:
- the filing of a later trademark (even though with respect to French trademarks, French
law does not provide this)
- the use of the later trademark – it being specified that such use must be in the course
of trade and without due cause,
- for different goods or services, but also for identical or similar goods and services.
Under the system of protection against the dilution of French trademarks, the breaching
party is held civilly liable but not for infringement, so that the procedural rules and the
penalties provided with respect to infringement cases do not apply. However, under the
system of protection against the dilution of Community trademarks, violations are considered
as infringements. Therefore, two procedural systems coexist in France, depending on
whether the reputed or well-known trademark whose distinctiveness is weakened is a French
trademark or a CTM.