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  • Writer's pictureRémi Fouque

Transactional protocol under French law: a tool for trademark disputes

Updated: Nov 6, 2023

Under French law, there is a solution for resolving a trademark dispute and reaching an agreement that has the force of law between the parties and does not require the intervention of a judge: a protocol transactionnel. MARS-IP can help!

Putting judges out of work? Under French law, not all trademark disputes can be resolved before the INPI (“National Institute of Industrial Property”) or the courts. There is, however, a solution in contractual practice, which consists in drawing up a coexistence agreement in the form of a transactional protocol. Such an agreement enables to settle a conflict between two parties amicably (I) and to act as a perpetual contract and the law of the parties (II). It offers indisputable guarantees of legal security.

I. A transactional trademark coexistence agreement resolves a trademark dispute without going to court

Let's take the example of a registered trademark that is likely to cause confusion with an earlier trademark because the signs, products and services are similar. However, the distribution channels are different. Instead of trying to "kill" the new trademark through litigation with an uncertain and likely costly outcome, the trademark owners can come to an agreement through a trademark coexistence agreement. This will protect the respective interests of the parties by allowing the two trademarks to coexist. Rather than a simple contract, it is advisable to choose the form of a transactional agreement, which, according to Article 2044 of the French Civil Code, is "a contract by which the parties settle a dispute that has arisen or prevent a dispute from arising" and which "must be in writing".

II. The settlement agreement replaces the perpetual contract and the law of the parties

According to article 2052 of the French Civil Code, a settlement agreement "prevents the parties from initiating or continuing legal proceedings with the same purpose". It replaces the lawsuit, thus definitively resolving it. If the coexistence protocol or agreement contains commitments by the parties, for example not to distribute certain products in a certain format, this commitment is irrevocable. It is not an open-ended contract that can be terminated at any time by either party, but a definitive commitment. The role of the lawyer is therefore crucial, as he will advise his client throughout the negotiation process in order to find the most advantageous solution to protect his interests, while at the same time satisfying the requirements of the other party and ensuring that a balanced settlement protocol is reached. Indeed, the French Supreme Court (Cour de Cassation) has stated that concessions between the parties cannot be ridiculous, on pain of nullity of the transaction.

Do you have any questions about French contract law or do you need to draw up a settlement agreement with a French party? MARS-IP assists companies and individuals in defending their image, brands, ideas and intellectual productions in France and abroad. Do not hesitate to contact us.

Rémi Fouque & Marie-Avril Roux Steinkühler


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