The decision in question penalizes an operator for illegally registering a trademark that is well known abroad and in a completely different sector, with the sole aim of attempting to profit from its reputation. The penalty in this case is unavoidable: the fraudulently registered trademark is canceled on the grounds of bad faith. This requires proof that the applicant was aware of the prior use of the sign and intended to exploit its reputation.
An individual files the French word mark “Togg” to designate, among other things, various products in class 3: soaps, perfumes, essential oils, cosmetics, hair lotions.
However, the Turkish company Togg, a manufacturer of electric vehicles and owner of an earlier European Union figurative trademark, sought to have the application declared invalid on the grounds that it had been filed in fraud of its rights.
Upon receiving the request for invalidation, the INPI found that the applicant was aware, on the date of filing, of the Turkish company’s use of the Togg sign, but did not consider this to constitute clear bad faith.
The Paris Court of Appeal overturns the decision
➡️ The Court points out that bad faith requires proof, at the time of filing, of knowledge of the prior use of the sign and of the intention either to harm the interests of a third party in a manner inconsistent with honest practices, or to obtain an exclusive right for purposes unrelated to the functions of the trademark.
➡️ Togg asserts that it cannot be a coincidence that the disputed trademark was registered three days after the official launch in Turkey of a high-end …
