The trademark "L'EQUIPE", renowned in the sports publishing business, had also been registered for other services. However, its owner should have made a serious use of it to have a strong legal base to bring an action for infringement and to avoid the risk of revocation.
But, for judges, sponsoring a sporting event does not mean making use of...
The Cour de Cassation (French Supreme Court) has just put an end to a legal saga that had been lasting for more than 10 years concerning the trademark "L'EQUIPE", renowned in the sports publishing business, which had initially also been registered to cover the following services: "Education; training; entertainment; sports and cultural activities".
Its owner saw fit to sue the company "Sport Co et Marquage" for infringement due to the registration and use of the sports equipment trademark "EQUIP'SPORT" for the same services in class 41 as mentioned above.
This was a bad move. In the end, its legal action for infringement was unsuccessful because the defendant filed a counterclaim seeking the revocation of the trademark "L'EQUIPE" for lack of serious use and the judges ruled in his favor.
Specifically, in a decision handed down on June 22, 20221, the Cour de Cassation recalled that the use of a trademark to sponsor a sporting event does not constitute genuine use of the trademark. In other words, by displaying its trademark in this context, its owner does not make use of it for this sporting activity in accordance with its essential function of guaranteeing the origin of the goods or services covered by its registration.
This is the very principle of "sponsorship": The owner of the trademark takes advantage of the notoriety of the event it finances to promote its own products and services. Consequently, the trademark "L'EQUIPE" has not been used in any serious way for the sports activities covered by its registration. The outcome is inevitable: The partial revocation of the trademark must be ordered.
Important clarification: The fact that the trademark gives its name to the sponsored sport event has no effect on the above.
This firm stand of the Cour de Cassation should serve as a reminder to be vigilant as to the effective use of one's distinctive signs, which is all the more true because it is possible since 2020 to bring an action for revocation directly before the French Patent and Trademark Office (Institut National de la Propriété Industrielle), without having to refer the matter to a court of law. This clearly makes it easier to bring such an action, which could further jeopardize the monopoly of well-established brands, even famous ones.
Footnote
1. No. 21-10.051
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