A French court has upheld a claim of trademark infringement and unfair competition brought by Canon France against two competitors for their use of the word "fac-simile" to promote the sale of telecopiers on the basis of Canon France's registration for the trademark FAC-SIMILE (in special script) in respect of telefacsimile and telefacsimile services.

Although the word "facsimile" had subsequently become a common descriptive term in France, the court determined the validity of Canon's registration on the basis of longstanding case law, which held that the validity of a trademark that is alleged to have become generic must be determined as of the date of application for the mark, in this case, September 6, 1983. Since the defendants were unable to establish that the mark was a generic and descriptive term in France in 1983, even though it was at that time in common usage in other countries, the court upheld the registration's validity.

However, under the new Trademark Act, which entered into force in 1991 (see our Information Letter N.S. 177) registered trademarks, which have become the common name for the product or service concerned as a result of the owners' actions, are subject to cancellation.