French Supreme Court Ruling: Trademark Disparagement and Intellectual Property Protection

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In a significant ruling by the French Supreme Court on September 27, 2023, (Cour de cassation, ch. com., 27 septembre 2023, 22-10.777, Akiva SARL c. Gaiatrend SARL et M.), judges clarified the concept of disparagement in cases involving the sending of formal notices to retailers accused of trademark counterfeiting.



The case revolved around a company specializing in the manufacturing and marketing of electronic cigarette liquids, which owned two European Union trademarks, namely FR-M. The company’s manager also held two EU trademarks, FR4 and FR-K. They initiated legal proceedings, alleging infringement, unfair competition, and parasitism, against a competitor producing electronic cigarette liquids labeled as “FS-M” and “FS-4.”

Disparagement Allegation

The defendant company argued before the Court of Appeal that the formal notices sent by the plaintiff company to their resellers constituted acts of disparagement. Their argument hinged on the absence of an explicit mention of an infringement action against their products. According to them, this omission discredited their products, thus constituting disparagement.


Court Decisions


Both the Court of Appeal and the Court of Cassation rejected the disparagement claim, even in the absence of explicit mention of an ongoing infringement action. The courts ruled that the purpose of these letters was to inform resellers about the infringing nature of the products, indirectly indicating the existence of an infringement action. The Court of Cassation affirmed that the plaintiff company had not intended to misrepresent the letter but had made a simple drafting error.


Strict Interpretation of Disparagement


The French Supreme Court’s decision highlights the strict interpretation of disparagement. The formal notices were not intended to damage the defendant company’s reputation. Instead, the plaintiff company aimed to inform resellers about the counterfeit products and put an end to the disturbance. Furthermore, the information in the letter was accurate and not misleading, ensuring that resellers understood the true purpose: to establish that the defendant’s products were counterfeit.




This legally sound and welcome decision reinforces the protection of trademark law. It underscores the importance of intent in disparagement claims and the need for clarity in communication. Trademark owners can take this ruling as a precedent to protect their intellectual property rights more effectively.


For comprehensive guidance and assistance on trademark-related matters, please contact our experienced legal team at Dreyfus Law Firm. We are here to help you navigate the complex landscape of intellectual property protection.