Background
Sud Gestion operates the approximately 350-center “A+ Glass” franchise network and owns French trademarks covering vehicle-glass maintenance, repair, and replacement services. Actiglass has operated a competing network under the “Actiglass” name since 2015. Alpha Glass, formerly an A+ Glass franchisee, joined the Actiglass network after leaving A+ Glass in November 2015.
Sud Gestion alleged that Allo Vitrage Auto produced and distributed business cards without authorization that reproduced the A+ Glass marks and imitated Sud Gestion’s colors, lettering, graphic style, and comic-book imagery. A call to the number printed on a card reached Elise, which handled telephone reception for Actiglass and certain members of its network; the operator offered to arrange an appointment at an Actiglass center, including an Alpha Glass location. Sud Gestion sued Allo Vitrage Auto, Alpha Glass, and Actiglass for trademark infringement and unfair competition.
The Paris Court of Appeal held Actiglass liable and awarded Sud Gestion €6,022 for economic trademark harm, imposed joint and several liability for €10,000 in moral damages, and imposed joint and several liability with Allo Vitrage Auto for €6,000 in unfair-competition damages. Actiglass appealed. Sud Gestion withdrew its cross-appeal, and Actiglass discontinued its appeal as to Elise.
The Court’s Holding
The Court of Cassation partially quashed the judgment. Under the applicable versions of Articles L. 713-2(a) and L. 716-1 of the Intellectual Property Code, trademark use requires active conduct and direct or indirect control over the act of use. Applying the Court of Justice of the European Union’s decision in mk advokaten, Case C-684/19, the Court held that a third party does not itself infringe merely because another operator’s infringing use may provide that third party with an economic benefit.
The evidence that callers using the number on the cards could be directed to Actiglass centers, and that Elise handled substantially more calls for Actiglass than for Allo Vitrage Auto, did not establish Actiglass’s autonomous and personal use of Sud Gestion’s marks. The appellate court therefore lacked a sufficient legal basis for attributing infringement to Actiglass.
The unfair-competition ruling failed for the same evidentiary reason. Article 1240 of the Civil Code requires proof of specific, affirmative acts committed by the defendant. Although the cards could create confusion, divert customers, and disrupt the A+ Glass network, the appellate court did not identify positive and personal acts by Actiglass. The Court vacated the damages and related costs imposed on Actiglass and remanded those issues to the Versailles Court of Appeal.
Key Takeaways
- An economic benefit from another party’s infringing trademark use does not, by itself, make the beneficiary an infringer.
- Trademark liability requires proof of the defendant’s active conduct and direct or indirect control over the challenged use.
- Unfair-competition liability under Article 1240 requires specific, affirmative conduct personally attributable to the defendant; evidence of confusion or customer diversion alone is insufficient.
Why It Matters
The decision limits the attribution of trademark infringement within commercial and franchise networks. A connection between infringing advertising and a business that may receive resulting customers is insufficient unless the evidence also shows that the business actively used the mark or controlled the infringing use.
The ruling likewise emphasizes that unfair competition is fault-based and defendant-specific. Courts must identify concrete conduct by each party rather than infer liability solely from commercial benefit, operational links, or the harmful effects of another entity’s acts.