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Droit de la Propriété Intellectuelle | Nouvelle compétence de l'INPI pour statuer sur la déchéance d'une marque pour non usage. Quelques clés pour anticiper sa défense

A registered trademark grants the proprietor a monopoly over the use of the products and services in respect of which the trademark is registered.

In exchange for enjoying this monopoly, it is incumbent on the proprietor to put the trademark to genuine use – i.e. to use it effectively and in compliance with its essential function, which is to guarantee the identity of the source of the goods or services for which it was registered – and renewed, where applicable.

In the event the trademark is not put to genuine use within five years of registration, or such use has been suspended during a continuous period of five years, the rights to the trademark in question may be subject to total or partial revocation proceedings (1).

Whereas until 31 March 2020, revocation proceedings had to be brought before the courts, certain provisions of the PACTE Act (2) which entered into force on 1 April 2020 granted authority to the INPI (National Intellectual Property Institute) to rule on the matter (3).

Now that revocation proceedings can be filed with the INPI, we are very likely to see an increase in such proceedings against trademarks registered more than five years ago in France.

French lawmakers have clearly facilitated access to revocation proceedings, which are now administrative in nature; however, the resulting decisions will be enforceable as a Court decision.

Consequently, the trademark proprietors in question will need to prove even more vigilant in building a case to demonstrate the genuine use of their trademarks, progressively, year after year and for each type of product and service protected. Why? To be able to satisfy requests for proof of genuine use as expediently as possible and in the best possible conditions.

Who bears the burden of proof of genuine use?

The burden of proof belongs to the trademark proprietor whose rights are subject to revocation, or to an authorised third party such as a licence-holder. Where genuine use cannot be demonstrated, the proprietor shall present proper reasons for non-use.

How is the use of a trademark assessed?

The INPI – or the judge – examines the proof of use submitted by the proprietor to determine if the trademark has been put to genuine use. Neither the commercial success nor the business strategy of a company is assessed.

For example, the mere presence of a trademark on a website is not sufficient, per se, to demonstrate genuine use. The probative value of a website may, however, be strengthened with proof of the number of visits to the site, and the number of orders placed on the site for the products and services in respect of which the trademark is registered.

What types of proof should be gathered, classified and saved?

Above all, proof of genuine use shall demonstrate the use of a sign as a trademark, which is not the same as the use of a sign as a company name or trade name.

The following items may constitute genuine use of a trademark in France:

– Brochures, catalogues, prospectuses and any commercial or advertising documents;
– Printouts of website pages;
– Price stickers and lists;
– Order slips or estimates;
– Invoices;
– Client statements indicating that the invoiced services were received;
– Sworn or solemn statements in writing;
– Polls – preferably conducted by independent firms.

Nevertheless, in order to constitute satisfactory proof, such documents shall present certain characteristics:

– Trademark reproduction: The documents provided shall reproduce the trademark in its registered form and demonstrate its use for the products/services in respect of which it is registered, in the geographic areas for which protection has been sought.

– Geographic Area, Dates and Continuous Use: The documents provided shall demonstrate the use of the trademark in the designated geographic area, the period of use and the continuous use of the trademark in question.
Proof of use shall be dated definitively and indisputably, and demonstrate the continuous use of the trademark for all products and services in respect of which it is registered. Dating systems such as blockchain exist.

– Magnitude and nature of the products and services in respect of which the trademark is registered: Proof of use shall demonstrate the magnitude and nature of the products and services in respect of which the trademark is registered.

– For the public: Proof of use shall demonstrate actual contact between the trademark and the public. It shall be geared towards the public, and not only internally.

What happens if the INPI finds that a trademark subject to revocation proceedings has not been put to genuine use? The sign is not enforceable against third parties as a brand, within the limit of the scope of the revocation decision.

As a result, it is vitally important to build up dated, classified, relevant and probative evidence of genuine use progressively over the life of your trademark.

Our team is at your disposal to advise you and guide you in building evidence of genuine use in order to identify and anticipate any risks to your trademark.

What about the use of your trademark in a modified form? Be sure to check out our next IP newsletter for the answer!

(1) Article L.714-5 of the French Intellectual Property Code and Article 58(1)(a) of EU Regulation 2017/1001 of 14 June 2017 on the European Union trademark.
(2) Act No. 2019-486 of 22 May 2019 on the growth and transformation of businesses.
(3) Note: Revocation proceedings due to lack of genuine use of a trademark may still be brought before the French courts in a number of specific situations, such as cases involving counterfeiting.

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