Withdrawn trade mark and unfair competition: which court has jurisdiction?
Total withdrawal of a trade mark: the exclusive jurisdiction of the specialised court can no longer be invoked
Two companies trading under an identical company name, “Guyane pièces auto”, were in dispute before the courts of French Guiana. The SARL had brought an unfair competition claim against the SAS before the tribunal mixte de commerce de Cayenne, alleging misappropriation of its company name. In its defence, the SAS raised an objection to jurisdiction in favour of the tribunal judiciaire de Fort-de-France, arguing that the disputed sign had also been registered as a trade mark, a matter which, under Article L. 716-5, II, of the French Intellectual Property Code, falls within the exclusive jurisdiction of specially designated tribunaux judiciaires. The cour d’appel de Cayenne upheld that objection. By a decision of 2 September 2026, the chambre commerciale of the Cour de cassation quashed that ruling, without remitting the case.
A trade mark that is no longer in force no longer grounds the exclusive jurisdiction of the tribunal judiciaire
Article L. 716-5, II, of the French Intellectual Property Code reserves to specially designated tribunaux judiciaires jurisdiction over actions relating to trade marks, including where they concern a related issue of unfair competition. That exclusive jurisdiction applies, however, only where the claim genuinely requires an examination of the existence or infringement of a right attached to a trade mark, or the application of rules specific to trade mark law.
In this case, the trade mark relied on by the SAS had been withdrawn in its entirety before the date on which the tribunal mixte de commerce ruled on the objection to jurisdiction before it. On that date, therefore, the SAS held no trade mark in force capable of being affected by the injunction sought. The SARL’s claim, based solely on general tortious liability, accordingly no longer required any examination of a trade mark right. The Cour de cassation decided the matter itself: the tribunal mixte de commerce de Cayenne was declared to have subject-matter jurisdiction.
This ruling is consistent with settled case law since 2016 (Com., 16 Feb. 2016, No. 14-24.295 and 14-25.340, on patents), extended to plant variety rights (Com., 16 May 2018, No. 16-28.728) and then to designs (Com., 18 Dec. 2019, No. 18-17.364), and confirmed for trade marks by a decision of 13 November 2025 (No. 24-11.454): the exclusive jurisdiction of the specialised court cannot be inferred from the “intellectual property environment” surrounding certain disputes; the tribunal de commerce therefore has jurisdiction where the action is based solely on unfair competition.
The need to check the status of the registered right before raising, or challenging, an objection to jurisdiction
The mere fact that a sign was, at some point, registered as a trade mark is not enough to oust the jurisdiction of the tribunal de commerce over a related unfair competition claim. That trade mark must still be in force on the date on which the court hearing the objection to jurisdiction rules on its own jurisdiction.
It is therefore essential, before raising such an objection or contesting its merits, to check the exact status of the registration on the French national trade mark register at the relevant date. A withdrawal, surrender or revocation occurring before the court rules may deprive the objection of any basis, and leave the party relying on it having to resume proceedings before the court originally seised.
Sources
Cour de cassation, chambre commerciale, 2 September 2026, No. 25-12.118, published in the Bulletin
Patents: Cour de cassation, chambre commerciale, 16 February 2016, No. 14-24.295 and No. 14-25.340, published in the Bulletin
Plant variety rights: Cour de cassation, chambre commerciale, 16 May 2018, No. 16-28.728
Designs: Cour de cassation, chambre commerciale, 18 December 2019, No. 18-17.364
Trade marks: Cour de cassation, chambre commerciale, 13 November 2025, No. 24-11.454
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