The Paris Judicial Court annulled two seizure‑counterfeiting orders on the grounds of lack of fairness due to the applicant’s omission of information.
On the basis of an international trademark designating France, a Turkish company had been authorised, through two orders, to carry out seizure‑counterfeiting operations in the premises of a French company it accused of trademark infringement.
The French company requested the withdrawal of these orders.
Indeed, it reproached the Turkish company for having presented the facts in support of its application in an unfair manner, by omitting to provide essential information regarding its Turkish trademark, which served as the basis for its international trademark.
In two rulings dated 20 December 2024, the Paris Judicial Court upheld the French company’s request.
The Turkish company had failed to mention that its Turkish trademark, serving as the basis for its international trademark application, had been provisionally refused registration by several decisions.
Yet, under Article 6(3) of the Protocol Relating to the Madrid Agreement, the fate of the international trademark at issue was tied to the fate of the underlying Turkish national trademark:
The protection resulting from the international registration, whether or not it has been the subject of a transfer, may no longer be invoked if, before the expiry of five years from the date of the international registration, the basic application or the registration resulting therefrom, or the basic registration, as the case may be, has been withdrawn, has expired or has been the subject of a renunciation or of a final decision of rejection, revocation, cancellation or invalidation, in respect of all or some of the goods and services listed in the international registration. The same shall apply if
i. an appeal against a decision refusing the effects of the basic application,
ii. an action aiming at the withdrawal of the basic application or the revocation, cancellation or invalidation of the registration resulting from the basic application, or of the basic registration, or
iii. an opposition to the basic application
results, after the expiry of the five‑year period, in a final decision of rejection, revocation, cancellation or invalidation, or requiring the withdrawal of the basic application or of the registration resulting therefrom, or of the basic registration, as the case may be, provided that the appeal, action or opposition in question began before the expiry of that period. The same shall also apply if the basic application is withdrawn, or if the registration resulting from the basic application, or the basic registration, is the subject of a renunciation after the expiry of the five‑year period, provided that, at the time of the withdrawal or renunciation, said application or registration is the subject of a procedure referred to in points i), ii) or iii) and that such procedure began before the expiry of that period.
There was therefore a high risk that the international trademark would no longer be valid, given that it had been registered for less than five years and was thus tied to the fate of the underlying Turkish trademark, should the Turkish trademark be definitively refused — which was highly likely in this case.
It was held that the Turkish company had acted unfairly in presenting the grounds of its application to obtain the seizure‑counterfeiting orders.
The judge’s decision to grant or refuse these orders could have been influenced had he been informed of the ongoing refusal of the Turkish trademark.
The judge was therefore unable to fully exercise his power to assess the circumstances of the case in order to authorise a proportionate measure.
The orders were therefore withdrawn and the seizure‑counterfeiting reports were annulled.
By Anne‑Sophie PILLOT, 23 September 2025