Introduction

Trademark infringement proceedings remain the preferred weapon for brand owners seeking to defend their rights. They uphold the exclusivity attached to the sign and sanction any unlawful appropriation. Yet this right is not absolute; it can be extinguished by the effect of forfeiture through acquiescence.

This mechanism, derived from European law and integrated into the French Intellectual Property Code, penalises the inaction of a trademark owner who, in full knowledge, allows the use of a later mark to continue for more than five consecutive years. Silence then becomes a true acceptance, rendering infringement proceedings permanently inadmissible.

Recent decisions of the Paris Court of Appeal in the SWEET PANTS (11 June 2025) and SCOTT (19 March 2025) cases illustrate the strict application of this rule. They serve as a reminder that tolerance, whether voluntary or not, can prove costly: the effective defence of a trademark portfolio requires constant monitoring and immediate reaction to infringements.

The legal foundations of forfeiture through acquiescence

Definition and statutory conditions

Article L.716-4-5 of the French Intellectual Property Code provides that infringement proceedings brought on the basis of an earlier mark are inadmissible where the proprietor has acquiesced, in full knowledge, for a period of five consecutive years in the use of a later registered mark for the relevant goods or services. The sole exception applies where the later mark was filed in bad faith.

The CJEU has clarified that four cumulative conditions must be met (CJEU, 22 Sept. 2011, Budvar, C-482/09):

  1. The later mark must be registered.
  2. Its filing must have been made in good faith.
  3. It must have been put to genuine use.
  4. The proprietor of the earlier mark must have had knowledge of both the registration and the subsequent use.

conditions forfeiture acquiescence

The role of good faith and statutory presumption

Pursuant to Article 2274 of the French Civil Code, good faith is always presumed. It is therefore for the proprietor of the earlier mark to establish that the later filing was made in bad faith.

Recent case law illustrations

The SWEET PANTS case: acquiescence in the face of extensive commercial use

In its decision of 11 June 2025 (Canada Goose International AG v. Sweet Pants SAS), the Paris Court of Appeal declared actions for invalidity and infringement inadmissible, as they were brought more than five years after the registration of a French semi-figurative mark SWEET PANTS.

  • Proven and serious use: the mark had been used since 2012, with growing intensity from 2014 onwards (advertising campaigns, dedicated stores, presence in department stores and on major e-commerce platforms).
  • Use in a modified form: slight variations (coloured background, the words “since 1982”) did not affect the distinctive character of the sign.
  • Knowledge of the use: public reputation, media presence, and a cease-and-desist letter sent by the claimant in 2016 all demonstrated that exploitation of the mark could not have been ignored.
  • Sectoral scope: forfeiture was upheld for clothing but not for headgear, as use on caps had not been sufficiently demonstrated.

This decision underscores that even a major international player (here, Canada Goose) may lose the right to act if it allows concurrent use to become established in the same market segment.

The SCOTT case: insufficient vigilance within a structured group

In its decision of 19 March 2025 (Bifratex SARL v. Scott Sports SA), the Paris Court of Appeal confirmed the inadmissibility of infringement proceedings based on the international word mark SCOTT.

  • Continuous exploitation: the later semi-figurative SCOTT mark had been in public use since 2000 on the sportswear market in France and across Europe.
  • Good faith presumed: absent contrary evidence, the filing of the later mark was deemed bona fide.
  • Genuine use: the word “SCOTT,” being the central and distinctive element, was sufficient to characterise use of the semi-figurative mark.
  • Imputed knowledge: the claimant and a sister company in the United States, both responsible for the group’s portfolio, had already brought legal and administrative actions against the defendant. Successive intra-group transfers of the mark could not obscure this knowledge.

The Court held that tolerance exceeding five years, in a context of direct competition and intra-group management, rendered the action inadmissible.

Practical consequences for trademark owners

The risks of prolonged inaction

  • Permanent loss of the right to bring infringement or invalidity proceedings against the later mark.
  • Weakening of the portfolio and forced coexistence with competing signs.
  • Risk of dilution of the mark’s distinctiveness.
  • Potential liability for legal costs and expenses.

Strategies for safeguarding rights

  • Implement active monitoring of filings and market use.
  • Respond swiftly: opposition, invalidity action, cease-and-desist.
  • Negotiate coexistence or limitation agreements where necessary.
  • Raise awareness within internal teams to ensure early detection of conflicting use.

Conclusion

Forfeiture through acquiescence is far from a theoretical concept: the SWEET PANTS and SCOTT cases demonstrate the strictness with which French courts apply it. They remind trademark owners that protection strategies cannot be limited to registration alone: they demand continuous monitoring and immediate responsiveness to infringements.

Dreyfus Law firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law firm is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

 

FAQ

1. What is forfeiture through acquiescence?
It is the loss of the right to act against a later mark where its use has been tolerated for five years, in full knowledge.

2. Can the bad faith of the applicant exclude forfeiture?
Yes, but it must be proven by the proprietor of the earlier mark, which is rarely admitted.

3. How is knowledge of use established?
Through public reputation, advertising of the use, coexistence in the same markets, or corporate and procedural links.

4. Does tolerance of a local mark have international effects?
Yes, forfeiture applies in each Member State where the use is established.

5. From when does the five-year period run?
From the moment the proprietor becomes aware of the registration and the actual use of the later mark.