France: proof of the well-known status of a trademark through the Barrisol case

The end of a license for intellectual property rights has the sudden effect of restoring the parties to the status quo ante. One day, the licensee is authorized to use the licensor’s intellectual property; the next day, the continuation of this use can be considered as an infringement of intellectual property. Getting through this phase smoothly requires meticulous attention.

A dispute arose between two French companies: Normalu and Interlignes Deco. Normalu, the owner of the BARRISOL brand, presents itself as the world leader in the manufacture and marketing of stretch ceilings, the result of a delicate alliance between art and know-how and whose architectural works arouse admiration around the world. The expansion of the Barrisol brand is based, among other things, on a network of handpicked distributors, which naturally implies the licensing of know-how and trademark. Hence, in 1990, Normalu granted Interlignes Deco the right to distribute and install its products, a contract which was terminated in 2014 at the initiative of the licensor.

A few months after the effective end of the contract, Normalu made it known that the former licensee continued to operate, online, its brands and its trade name. Firstly, a query relating to the group “interlignes deco barrisol” presented results including, on the one hand, the Interlignes Deco website and, on the other hand, its Facebook page, which contained images reproducing the BARRISOL brand. Secondly, the former licensee’s website contained a link to a video in which the BARRISOL brand was displayed. Thirdly, the Interlignes Deco Youtube account included a video showing the BARRISOL brand.

Therefore, Normalu brought Interlignes Deco before the Paris court of first instance, which delivered its judgment on September 21, 2021. Among the many points that call for attention is that of proof of the brand’s reputation.

The court of the first instance rejected Normalu’s request for the recognition of the trademark’s reputation. Before the Court of Appeal, Normalu reinforced its arguments and won its case on this point by demonstrating the duration of the brand (certificates dating from 1985 and 1986), its geographical scope (network of 1,200 distributors in 145 countries), a previous court decision having recognized that BARRISOL was a well-known trademark, and a series of accounting factors including the level of advertising investments, its market shares or the expenses related to the protection of intellectual property. Normalu also provided a survey demonstrating the reputation of the BARRISOL brand among construction and building professionals. However, since this survey was carried out after the period during which the infringement took place, the court considered that it could not be considered in the assessment of reputation. Nevertheless, this was not enough to reject Normalu’s claim, and the court considered BARRISOL as a well-known trademark.

This decision has the merit of recalling the need to produce and regularly update the file containing proof of the reputation of a trademark.