Industrial Property Law

Under Article L. 711-2, 11° of the Intellectual Property Code, a trademark that is not distinctive at the time of its registration because it is not inherently distinctive, or is descriptive or commonplace, may acquire distinctiveness through use in relation to the goods or services for which it is registered . The distinctive character of a mark may be acquired through the use of the sign alone,  …

Acquisition of distinctive character through use

Under Article L. 711-2, 11° of the Intellectual Property Code, a trademark that is not distinctive at the time of its registration because it is not inherently distinctive, or is descriptive or commonplace, may acquire distinctiveness through use in relation to the goods or services for which it is registered . The distinctive character of a mark may be acquired through the use of the sign alone, as part of a registered mark or in combination with it . The following are not capable of acquiring distinctive character through use: a sign consisting exclusively of the shape imposed by the nature or function of the product, or conferring on the latter its essential value , a misleading sign , an unlawful sign .

In order to assess whether a trademark has acquired distinctiveness through use, the court must take into account all the elements likely to show that the trademark has become capable, for the public concerned, of identifying the product or service as originating from a given undertaking, and thus of distinguishing that product or service from those of other undertakings . The acquisition of distinctive character through use presupposes that the trademark owner establishes continuous, intense and long-term use of the sign and its strong presence on the market, so that it is known and identified by the relevant public as a trademark . The review must focus both on the existence of genuine use not subject to expiry for each of the designated goods and services, and on the significance of that use for the acquisition of distinctiveness, for those goods or services for which the mark is initially descriptive . Nevertheless, continuous, intense and long-term use, accompanied by significant advertising investments, does not necessarily render the sign distinctive . The courts must in effect determine whether the intensive use of the mark, the reputation of the company name and sign, and the intensive use of the trade name and logo to designate the activity in question demonstrate that the relevant public has established a link between the terms used by the mark and the services provided by that company . Thus, the use of a mark that is the sign and trade name of a restaurant, in particular in guidebooks, on the restaurant's storefront, and on the plates on which dishes are served to customers, constitutes use as a trademark for restaurant services, since the target public establishes a link between the mark and the restaurant services provided by the restaurant .

The “Rent a car” trademark, which is clearly identified by French holders of a driver's license as a car rental trademark, and which is one of the car rental trademarks most familiar to them, has acquired a distinctive character through use . Although the term “Digital” was not, in itself, particularly distinctive when it was registered as a trademark, it has since acquired, through the uninterrupted use that has been made of it for more than thirty years, both nationally and internationally, a reputation among professionals and users alike . On the other hand, the name “Compagnie des bateaux mouches”  has not acquired any distinctive character, since the expression “bateaux mouches” has become almost generically used to designate the activity of transporting passengers on the river Seine and thus the relevant public will not identify the service as necessarily originating from a specific undertaking.

Cass. com, 8 June 2017, LawLex201700001024JBJ; Cass. com, 13 October 2021, LawLex202200000874JBJ; CA Paris, 6 April 2018, LawLex202100005288JBJ.

Cass. com, 8 June 2017, LawLex201700001024JBJ.

CA Paris, 2 October 2024, LawLex202400007462JBJ.

Cass. com. 7 July 2021, LawLex202100004644JBJ.

CA Paris, 4 December 1995, LawLex202200001097JBJ.

CA Versailles, 12 January 2006, LawLex202100005980JBJ.

Cass. com, 13 October 2009, LawLex202100006154JBJ.

Cass. com., 8 December 1981, LawLex202200001190JBJ.

Cass. com, 8 June 2017, LawLex201700001024JBJ; Cass. com, 7 July 2021, LawLex202100004644JBJ.

CA Paris, 2 November 2021, LawLex202200000869JBJ.

CA Lyon, 20 December 2012, LawLex202100005717JBJ.

Cass. com, 27 January 2021, LawLex202100000273JBJ.

Cass. com, 7 July 2021, LawLex202100004644JBJ. 

Industrial Property Law

46. Acquisition of distinctive character through use

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46. Acquisition of distinctive character through use

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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