In a dispute concerning the use of third party trademarks to advertise one’s own products, the Cour de Cassation, in a decision of 10 February 2015, illustrated the scope of the exception of necessary reference.
Whilst trademark holders can prevent third parties and especially competitors from using their trademarks without their consent, there exists however an exception to this monopoly for manufacturers of accessories. Article L.713-6 b) of the French Intellectual Code states that the registration of a trademark “does not preclude the use of the same symbol or that of a similar symbol as necessary reference to indicate the intended purpose of a product or a service, in particular as accessory or spare part, provided that there is no confusion as to their origin.”
In this case, a company selling degradable bindings for viticulture had used, during the demonstration at a trade exhibition, an electric linker sold under another trademark to demonstrate the compatibility of its product with this kind of device, which is widely used in that industry. The trademark owner had then acted on it and claimed infringement of their rights.
But while case law abounds on accessories as such, for which the reference to a third party trademark is required, it is less common in regards to the use of a third party product to praise the attributes of one’s own product. Actually, in the meaning of the law/strictly speaking, the said bindings are not an accessory to the electrical linker of this trademark in particular. The purpose of the company was only to demonstrate the compatibility of its products with this kind of device.
The Cour de Cassation ultimately dismissed the claim after having examined, on one hand the necessity of using a third party product in a public demonstration and on the other hand, the absence of any risk of confusion as to the origin of the products.
The judgment notes first that the sole purpose of the demonstration was to convince wine industry professionals that the bindings could be severed with an electrical linker. Since the company does not manufacture such a device, it had to use the electrical linker of a competitor. Choosing this particular competitor was not questionable since it is the world leader in its field. The court concluded that “the comprehensible and complete information regarding the compatibility between the bindings and the use of electrical linkers could not have been transmitted to the public without using the trademark of a third party”. Ultimately, what justifies this usage is the fact that the company didn’t have any other choice. It is still necessary, in accordance with the provisions set out in the Article L713-6 b), for the use of the symbol not to be such as to create a risk of confusion over the origin of the products. However, the trademark of the third party was reproduced “neither on their products, nor on their packaging, not even on their commercial documentation”, on the contrary it was the trademark of the company selling the bindings which was visible so that no risk of confusion was established.
In conclusion, according to the Court’s ruling, it is allowed to use the products of a competitor to demonstrate the attributes of one’s product, without its consent; provided that such use was necessary and that it is not likely to mislead the public as to the origin of the products.
 Cour de Cassation, Commercial Division, February 10, 2015, 13-28.263