Clarifications on the impact of the Evin law on trademarks

The Evin law relative to the anti-smoking and anti-alcohol campaign was put into force in France in January 1991 and deals specifically with restrictions on communication and advertising for tobacco products and alcoholic beverages. According to the text, « any publicity or advertising in favor of a company, a service, apiece of goods, or an article being neither an alcoholic drink, nor a tobacco product which, because of its distinctive sign, reminds of an alcoholic drink or a tobacco product must be considered as indirect advertising for a drink or a tobacco product and is then subject to prohibition or strict restrictions drawn by the law ». Then, it necessarily has an impact on trademark registration and use

 

I. The ins and outs of the law : The consequences of the law are to make a sign already filed for tobacco or alcohol products inalienable, as any advertising of the same sign for other goods or services would be forbidden. For example, the Benson and Hedges Company owns the trademarks LUCKY STRIKE® particularly in class 34.

Consequently, a third company has no interest in filing the same sign in other classes because they will have no right to promote it as it could be perceived as indirect advertising for cigarettes. Moreover, the law could even prevent owners of prior trademarks filed for different goods and services from advertising after the filing of an identical trademark for tobacco or alcohol. For example, if one owns the trademark « COCORICO » for clothes and a company files the same trademark for wine afterwards, one would be unable to advertise one’s trademark anymore (even for clothes), as this could be seen as indirect promotion for the eponym wine.

Nevertheless, that was not the purpose of – the law and that is why judges entered the following adjustments. The law does not apply to goods/services already commercialized before its enforcement, i.e. January 1st, 1991. – Moreover, the owner of a prior trademark can react against the new filing for tobacco or alcohol products on two legal bases: civil liability for fault (the new filing being an obstacle to the normal use of the prior mark), or cancellation action on the basis of article 711.4 of our Intellectual Property code (which prohibits filing an application from affecting a prior trademark). 

II. Our practical recommendations in light of the law : The multiplication of French cases relative to the application of this law clearly demonstrates the necessity for every trademark owner to consider the following:

– If one is in the industry of tobacco or alcohol products For a definitive and complete security of anew project, it would, in fact, be necessary to check if prior identical trademarks exist in any classes.

 – If one is in other fields of activity than those of tobacco and alcohol In case of a new trademark, were commend to search for identical trademarks in classes 32/33 and 34 in order to ascertain that one will not be limited in dissemination and advertising of one’s project.

We also advise to conduct trademark watches in those classes so as to know about the filling of new trademark applications as soon as possible with a view to react immediately. We hope the above will clarify the incidences of the Evin law on trademark strategies when France gets concerned in communication plans. 

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