Trademarks: acquiescent forfeiture

In a judgement of 13 August 2026 (Aix-en-Provence Court of Appeal, No. 25/11398), the Court reiterates a key distinction in trade mark law.

A company invoked its former company name in an attempt to have several wine trade marks cancelled.

The defendant invoked preclusion by acquiescence: the holder of an earlier right who has, for a period of five consecutive years, acquiesced in the use of a later registered trade mark, whilst being aware of such use, is no longer entitled to seek its invalidation, unless the applicant acted in bad faith.

The Court does indeed recognise all the conditions for estoppel by acquiescence, yet nevertheless holds that the civil society organisation retains an interest in bringing proceedings.

It may seem contradictory, but the motivation for acting is not the same!

The Court acknowledges that this same prior right, consisting of a company name, remains fully relevant for the purposes of determining the status of ‘interested party’ required to bring an action for revocation.

The Court reasons as follows:

• Regarding nullity: there must be a prior right plus the absence of preclusion – in this case, preclusion has been established, so the action for nullity fails;
• As regards revocation: it is sufficient to be an interested party. In this case, the applicant, who relied on a company name, is characterised as an ‘interested party’ and could therefore bring proceedings for the revocation of the disputed trade marks.

Education is invaluable:

• prescription may render an action for nullity ineffective;
• however, it does not extinguish the prior right;
• that prior right may still form the basis for standing to bring other actions provided for in the Intellectual Property Code, such as an action for revocation.

For holders of prior rights, the decision serves as a reminder that a litigation strategy does not necessarily come to an end when an action for invalidity is no longer an option.

The loss of a procedural lever does not mean that all means of action have been lost.

FIRSH’s inputs

This judgement usefully illustrates that preclusion by acquiescence is a ground for dismissing a specific claim, rather than a mechanism for extinguishing the prior right itself. This distinction, which is sometimes overlooked in practice, can prove decisive in formulating a litigation strategy.

Claire Poirson & Léa Monel