It is not uncommon for trademark owners to enter into distribution agreements with various operators, thereby granting them permission to use those trademarks. But does this mean that distributors can register the trademarks they use? It all depends on the context, as the case reported here shows.
The Indian company Cholayil, which has held Medimix trademarks in several non-European countries since 1967, particularly for soaps, has entrusted the exclusive import and distribution of its products in France to a distributor.
The manager of this distributor registered the French word mark Medimix in 2005 under the name of his own company, Kerala, the European Union word mark Medimix in 2006, and then the French word mark “Medimix libre de tout problème de peau” (Medimix free from all skin problems) in 2008.
Cholayil sued Kerala for infringement of French trademarks on the grounds that they had been registered in violation of its rights. After winning the case in the first instance before the Lille District Court, Cholayil was ultimately unsuccessful before the Court of Appeal, which ruled that there had been no infringement.
The Court of Cassation dismisses the appeal in a ruling based primarily on the findings of fact made on appeal.
➡️ It is recalled that:
• in a letter, Kerala complained about the violation by third parties of its import monopoly in France and indicated that it would be forced to register the Medimix trademark in France to “prevent any further illegal imports”;
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