FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
5.8 Measures to Address Fraud Procedures Before the FTO
However, the assignment must be in writing to be valid. It must precisely identify the content of the assigned rights (assigned goods and services, dura - tion, territory, promotional use, right to licence) and the assignment price. In light of recent case law, a trade mark assignment must include consideration (an assignment price) that is consistent with the actual value of the trade mark. If the price is too low, or even non-existent (for exam - ple, where the trade mark is assigned for free or for a purely symbolic amount), the transaction may be recharacterised as a donation. Under French law, a donation must be executed before a Notary Public in order to be valid. The FTO is not required to formally approve the assignment. 6.2 Licensing Requirements or Restrictions It is strongly recommended to execute licence agree - ments in writing, as mentioned. French case law may admit the existence of tacit licences under certain conditions. However, in order to ensure that such licences are not perpetual, the trade mark owner may, at any time, terminate the tacit licence and request the cessation of exploitation of the sign within a reasonable period of time. As regards exclusivity, licences can be exclusive, non- exclusive or similar to a sole licence if the licensor retains its own right to use the licensed trade mark. 6.3 Registration or Recording of an Assignment or Licence The recording of trade mark assignment or licence agreements at the FTO is not, in itself, compulsory for the assignment/licence to be valid. However, such recording is necessary and highly rec - ommended especially because it is the only way for the licensee and/or assignee to enforce their rights against third parties.
The FTO has exclusive jurisdiction to refuse, revoke or cancel marks that were filed fraudulently, based on Article L.711-2 of the French Intellectual Property Code as an absolute ground of refusal, as part of opposition or cancellation actions: • based on bad faith – according to the first deci - sions of the FTO on this ground, bad faith is assessed similarly to fraud, namely: (a) when it is demonstrated that the applicant/ owner of the fraudulent mark has filed said mark with malicious intent, (ie, with the intent of unduly appropriating benefits attached to the plaintiff/plaintiff’s activities, with the intent of depriving the plaintiff of a sign necessary to its activity, with the intent of hindering the plaintiff by opposing the ownership of the mark that was filed fraudulently, etc); and (b) when it is demonstrated that the applicant/ owner knew about the use or rights of the plaintiff; or • when a mark has been applied for by the agent or representative of the owner of a mark, in their own name and without the owner’s authorisation, unless the agent or representative justifies their action (Article L.711-3 of the French Intellectual Property Code, III°). Procedures Before Courts Courts have exclusive jurisdiction for actions to claim ownership of a mark filed fraudulently ( action en rev- endication ). By such action, the plaintiff does not seek cancellation, but assignment – by the courts – of the fraudulent mark (Article L.712-6 of the French Intel - lectual Property Code).
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
There are no specific procedures for assigning a trade mark or copyright, and you can even assign all or part of a trade mark before it is actually registered. The relevant provisions are those of general contract law, arising from the French Civil Code.
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