Bad Faith Trade Mark Filings in France: Article L.711-2, 11° of the CPI

The concept of bad faith as an absolute ground for trade mark invalidity was formally codified in French law by the Ordinance No. 2019-1169 of November 13, 2019, which introduced Article L.711-2, 11° of the Code de la Propriété Intellectuelle (CPI). This provision states simply that a trade mark whose application was filed in bad faith (déposée de mauvaise foi) by the applicant cannot be validly registered, and if registered, may be declared invalid. Since April 1, 2020, the INPI has had direct competence to hear cancellation actions based on bad faith, bringing what was previously an exclusively judicial matter into the realm of administrative proceedings.

The Legal Background: From Fraud to Bad Faith

Before the 2019 reform, French law did not expressly include bad faith as a ground for trade mark invalidity. Instead, French courts relied on the general civil law principle of “fraus omnia corrumpit” (fraud corrupts everything) and the former Article L.712-6 of the CPI, which provided that a registration obtained fraudulently could be challenged. This meant cancellation for fraudulent intent required judicial proceedings — it was not possible before the INPI.

The 2019 ordinance transposed EU Directive 2015/2436 and Regulation (EU) 2017/1001, which require Member States to recognise bad faith as an absolute ground for invalidity. The reform:

• Codified bad faith as the eleventh absolute ground for refusal and invalidity under Article L.711-2, 11°.
• Added Article L.714-3, providing that a registration not complying with Article L.711-2 shall be declared invalid.
• Assigned the INPI jurisdiction over bad faith invalidity actions under Article L.716-2, alongside court jurisdiction for counterclaims.

What Constitutes Bad Faith?

Neither the CPI nor the EU Directive defines bad faith in detail. The concept has been shaped by CJEU case law, French court decisions, and emerging INPI practice. The assessment is based on an overall analysis of all relevant factors specific to the case, examined at the time of filing the trade mark application.

Under Article 2274 of the French Civil Code, good faith is always presumed. The burden of proof lies entirely on the party seeking invalidation, who must provide relevant and consistent evidence establishing that the applicant acted with a dishonest intention.

The INPI, following the CJEU’s guidance (particularly the Koton decision, C-104/18, September 12, 2019), assesses two cumulative elements:

• Knowledge: The applicant was aware, at the time of filing, of the existence of a prior use of the sign (or similar signs) by a third party.
• Dishonest intention: The applicant’s intention at the time of filing was not legitimate but rather aimed at undermining the interests of a third party or obtaining an exclusive right for purposes unrelated to the essential functions of a trade mark.

Key Indicators of Bad Faith

Based on CJEU jurisprudence, French court decisions (including the Court of Cassation), and INPI practice since 2020, the following indicators are considered when assessing bad faith:

• Knowledge of prior use by a third party: Did the applicant know that the sign was already being used by another party in connection with identical or similar goods? Knowledge can be inferred from the applicant’s professional activity, the reputation of the prior sign, prior commercial or contractual relationships, or industry proximity.
• Blocking or obstructive intent: Was the filing made without genuine intention of commercial use, solely to prevent a competitor from using or registering the sign? The Court of Cassation has held that a filing made without intent to use the mark for the applicant’s own goods, with knowledge of a third party’s use, and with the aim of blocking or hindering that party’s market entry, constitutes bad faith (Cass. com., March 17, 2021, No. 18-19.774).
• No intention to use: While French law does not require a declaration of intent to use at the time of filing, the complete absence of any genuine commercial project can support a finding of bad faith, particularly when combined with other indicators.
• Attempts to monetise the filing: Evidence that the applicant sought to sell, license, or extract financial compensation from the legitimate user of the sign (e.g., proposing to “settle” in exchange for payment) strongly indicates bad faith. The INPI has cited this factor in several decisions.
• Serial filing of third-party signs: A pattern of filing trade marks that are identical or highly similar to well-known brands belonging to different third parties constitutes strong evidence of a parasitic strategy, even if each individual filing might appear plausible in isolation.
• Identity or near-identity with the prior sign: The closer the contested mark is to the sign used by the third party, the stronger the inference of deliberate copying.
• Non-use since filing: If the mark has never been used since registration, this supports (though does not alone prove) the inference that the filing lacked a genuine commercial purpose.
• Diversion of the trade mark function: Filings that seek to monopolise a sign for purposes other than indicating commercial origin — such as blocking competitors, extorting payment, or capturing public domain heritage — may constitute bad faith even without targeting a specific third party.

What Does Not Constitute Bad Faith

Conversely, the INPI and French courts have rejected bad faith arguments where:

• The filing aims to strengthen or extend pre-existing rights (e.g., filing a new registration to update an existing mark or broaden its coverage).
• There is a genuine and legitimate commercial project behind the application, even if the project has not yet materialised.
• The applicant independently conceived the sign without knowledge of the third party’s use.

The INPI Cannot Raise Bad Faith Ex Officio

An important procedural point: the INPI cannot raise bad faith on its own initiative during examination of a trade mark application. Bad faith can only be invoked by a third party in a nullity action (action en nullité) filed after registration. This means a bad faith filing will be registered unless and until a third party challenges it.

Relationship with the Acquiescence Rule

Under Article L.716-2-8 of the CPI, a prior rights holder who has tolerated the use of a later-registered mark for five consecutive years with knowledge of that use can no longer request invalidation of the later mark on relative grounds. However, this acquiescence defence does not apply if the later mark was filed in bad faith. Bad faith thus overrides the normal time-bar, making it a powerful lever for prior rights holders who discover an abusive filing late.

The Procedure

Invalidity actions based on bad faith may be filed:

• Before the INPI: As an administrative action under Articles L.716-2 and L.716-5 of the CPI. Any legal or natural person may file, and no specific legal interest needs to be demonstrated for actions based on absolute grounds (including bad faith). The INPI procedure is adversarial, with exchanges of written observations and a possible oral hearing.
• Before the courts: As a counterclaim in infringement proceedings, or where enforcement measures are already underway. Courts also retain jurisdiction for invalidity actions linked to certain rights (copyright, designs, personality rights).

Invalidity for bad faith is not subject to any statute of limitations (imprescriptible) — unlike other grounds, there is no time bar for bringing the action. This reflects the seriousness with which French law treats dishonest filings.

Strategic Recommendations

• Document your prior use before acting: If you believe a competitor has filed a mark in bad faith, collect and organise evidence of your prior use, the applicant’s knowledge of your use, and any communications that reveal their intentions, before filing a nullity action.
• Look for patterns: Serial filing of third-party signs is strong evidence. If the applicant has filed multiple marks corresponding to different brands, this pattern supports the bad faith argument across all filings.
• Preserve communications: Emails, messages, or letters in which the applicant proposes to “sell,” “license,” or “settle” the mark for money are powerful evidence of monetisation intent.
• Act even if five years have passed: Bad faith nullity actions are imprescriptible and override the acquiescence defence. A late discovery of an abusive filing does not prevent action.
• Use the INPI route: For standalone bad faith invalidity actions, the INPI provides a faster, cheaper, and more accessible alternative to court proceedings.

Common Mistakes

• Assuming bad faith is easy to prove: Good faith is presumed under French law. The claimant bears the full burden of proof with relevant, consistent, and dated evidence.
• Confusing bad faith with likelihood of confusion: Bad faith is an absolute ground that sanctions dishonest intent. It does not require proving likelihood of confusion. The two analyses are independent.
• Filing a mark with blocking intent: Applicants should be aware that filing a mark without genuine intention to use it, solely to prevent a competitor from accessing the market, creates significant legal exposure under Article L.711-2, 11°.
• Ignoring the acquiescence exception: A bad faith filing cannot be shielded by the five-year acquiescence rule. Prior rights holders should not assume that time alone protects a dishonest registration.
• Relying on a single indicator: Bad faith is assessed globally. A single factor (knowledge, non-use, or monetisation attempt) may not suffice in isolation. The strongest cases combine multiple indicators into a coherent narrative of dishonest intent.

Key Takeaway

Bad faith is now a fully codified and independently enforceable ground for trade mark invalidity in France. Under Article L.711-2, 11°, a filing made with dishonest intent — whether to block a competitor, extract payment, parasitically capture a third party’s sign, or divert the essential function of a trade mark — can be invalidated through administrative proceedings before the INPI or through the courts. The assessment is global, examining all relevant factors at the time of filing. Bad faith actions are imprescriptible and override the acquiescence defence, making them a powerful tool for rights holders confronting abusive registrations. For applicants, the message is equally clear: trade mark filings should reflect a genuine intention to use the mark as an indicator of commercial origin, not as a weapon of commercial obstruction.