Trade mark infringement: distinguishing admissibility from merits

The proprietor registered in the national trade mark register may bring an admissible trade mark infringement action provided that it relies on that status. It is irrelevant that its opponent disputes the validity of the assignments through which it holds the trade mark. According to the Cour de cassation (France's highest civil court), the infringement action is a restricted-standing action (action attitrée), reserved to the registered proprietor or, with the proprietor's consent, to the licensee. The existence of the right relied on goes to the merits, not to the admissibility of the action (Com., 23 September 2026, No. 24-20.689).

Key points

• The trade mark infringement action is a restricted-standing action: the law reserves it to the registered proprietor of the trade mark or, with the proprietor's consent, to its licensee.
• The current proprietor of a trade mark, registered in the national trade mark register, may bring an admissible infringement action where it relies on that status.
• Challenging the validity of the original filing or of the successive assignments of a trade mark amounts to disputing the existence of the right, which goes to the merits of the infringement claim.
• Article L. 716-4-2 of the French Intellectual Property Code subjects the infringement action to a five-year limitation period (prescription). That period runs from the day on which the proprietor knew or ought to have known the last fact enabling the action to be brought.

A chain of trade mark assignments disputed by the defendant

The dispute was between a company presenting itself as the registered proprietor of a trade mark and a business sued for infringement, which disputed the chain of assignments of that trade mark. A company and the association of which it is a member hold, as proprietors or exclusive licensees, a portfolio of trade mark rights covering rigid inflatable pleasure boats. The company claimed to be the proprietor of a French semi-figurative trade mark, acquired from a non-trading company (société civile) which had allegedly itself acquired it from the association.

The company and the association sued another company for infringement of that trade mark. The pre-trial judge (juge de la mise en état), the judge responsible for preparing the case, declared their claims inadmissible. The Lyon court of appeal upheld that outcome in the decision under appeal (CA Lyon, 21 December 2023, No. 22/06247). According to the appeal judges, the applicant association did not have legal personality on the date on which the application for registration was filed.

The court of appeal drew a chain of consequences from this. The association could neither bring the trade mark into its assets nor transfer it. The assignments relied on could therefore have had no effect, and the company had not shown that it was the proprietor of the trade mark. On that basis, the appeal judges had closed off access to the infringement court without examining the claim itself.

The commercial chamber quashes that decision in its entirety: the company relied on its status as current proprietor of the trade mark, registered in the national trade mark register. The case returns to the Lyon court of appeal, differently constituted. The Court relies on Article 31 of the French Code of Civil Procedure and on Articles L. 713-1 and L. 716-4-2 of the French Intellectual Property Code, from which it derives the following rule:

It follows that the infringement action is a restricted-standing action, reserved by law to the registered proprietor of the trade mark or, with the proprietor's consent, to its licensee.

The commercial chamber criticises the appeal judges for confusing two distinct questions. According to the decision, the court of appeal "ruled on the existence of the right relied on, which falls within the examination of the merits of the infringement claim and not the admissibility of the action". Another complaint, concerning the conduct of the appeal hearing, was declared inadmissible and has no bearing on the outcome.

Admissibility or merits: who may bring a trade mark infringement action?

Where the registered proprietor of a trade mark brings an infringement action, a challenge to the origin of its right does not make its claim inadmissible: that debate goes to the merits. Admissibility refers to the right to be heard by the court: an inadmissible claim is dismissed without examination. The merits concern whether the claim is justified. The two stages follow different logics.

Article 31 of the French Code of Civil Procedure opens the action to all those with a legitimate interest in the success or dismissal of a claim. That provision nevertheless reserves cases in which the law confers the right to bring proceedings only on persons it designates. The restricted-standing action corresponds to those cases: only the persons designated by law may bring it, and no one else.

For trade mark infringement, Article L. 716-4-2 of the French Intellectual Property Code designates the proprietor of the trade mark or the licensee with the proprietor's consent, unless the agreement provides otherwise. The Cour de cassation infers from this that the registered proprietor relying on that status may bring an admissible action. The court cannot dismiss it at the outset by calling into question the existence of its right.

The business sued remains free to dispute that right, but on different ground. Arguing that the original applicant lacked legal personality, or that the assignments have no effect, amounts to denying the existence of the right relied on. According to the Court, that question falls within the examination of the merits of the infringement claim. The court therefore examines it on the merits, once the action has been declared admissible.

Registration in the national trade mark register gives the registered proprietor access to the infringement court. Article L. 713-1 of the French Intellectual Property Code provides that registration confers on its proprietor a property right in the trade mark for the goods or services designated. That right is exercised without prejudice to rights acquired by third parties before the filing date or the priority date of the trade mark.

What the decision affirms about the trade mark infringement action

The decision affirms that the trade mark infringement action is a restricted-standing action and draws a clear distinction between standing (qualité pour agir) and the existence of the right relied on. The court of appeal had reasoned from the legal capacity of the original applicant to work back through the entire chain of assignments. The Cour de cassation relocates that reasoning: it concerns whether the right actually exists, and therefore the merits, not whether the action is open.

Article L. 716-4-2 of the French Intellectual Property Code completes the regime of this restricted-standing action. The holder of an exclusive right of exploitation may bring an infringement action if, after formal notice (mise en demeure), the proprietor does not exercise that right within a reasonable time. Any party to a licence agreement may intervene in proceedings brought by another party in order to obtain compensation for its own damage. Finally, the same article sets the limitation period for the action:

• Period: five years.
• Starting point: the day on which the holder of a right knew or ought to have known the last fact enabling the action to be brought.

Article L. 716-4-2 of the French Intellectual Property Code also deals with collective marks and guarantee marks. A person authorised to use such a mark may bring an infringement action only with the proprietor's consent, unless the regulations governing use provide otherwise. That person may intervene in proceedings brought by the proprietor in order to obtain compensation for their own damage.

Proprietor, licensee, defendant: what to check in trade mark infringement?

Each party to a trade mark infringement dispute can draw practical checks from the decision, depending on its position. The outcome depends on the status relied on by the claimant and on its registration in the national trade mark register. It also depends on the nature of the objections raised against its right: those relating to the existence of the right go to the merits.

For the trade mark proprietor

The proprietor of a trade mark checks that its registration in the national trade mark register reflects its current position, particularly after an acquisition. The decision specifically relies on the status of current registered proprietor. The proprietor also keeps the successive filing and assignment documents, since the opponent may challenge their validity on the merits. Finally, the proprietor monitors the five-year limitation period, which runs from the day on which it knew or ought to have known the last fact enabling it to bring proceedings.

For the licensee and the holder of an exclusive right

Before bringing any action, the licensee checks that the proprietor consents to the licensee bringing it, or that the licence agreement authorises it to do so. Article L. 716-4-2 of the French Intellectual Property Code makes the licensee's action subject to that consent, unless otherwise agreed. The holder of an exclusive right of exploitation keeps a record of its formal notice to the proprietor and of the proprietor's inaction for a reasonable time. The same article allows any party to the licence agreement to intervene in proceedings brought by another party.

For the business accused of infringement

The business sued for infringement first checks the status relied on by the claimant: registered proprietor, authorised licensee or holder of an exclusive right. Where the claimant is the registered proprietor, the business's objections concerning the original filing or the assignments relate to the existence of the right. The business therefore gathers evidence on the legal personality of the applicant on the filing date and on the validity of each assignment. It also compares the date of the alleged acts with the five-year limitation period.