Industrial Property Law

The owner of a trademark is under an obligation to use it. If no genuine use is made of it, without good reason, for the goods or services for which the mark is registered, for an uninterrupted period of five years, the owner is liable to lose his rights (Article L. 714-5 IP Code) . The application for revocation may relate to all of the goods or services for which the challenged mark is registere …

Genuine use of trademark

The owner of a trademark is under an obligation to use it. If no genuine use is made of it, without good reason, for the goods or services for which the mark is registered, for an uninterrupted period of five years, the owner is liable to lose his rights (Article L. 714-5 IP Code) . The application for revocation may relate to all of the goods or services for which the challenged mark is registered, or to only part of them (Art. L. 716-3, para. 2, IP Code), in which case it extends only to the goods or services covered in the application (Art. L. 716-3, para. 3, IP Code).

In order to characterize genuine use, the mark must be used as a trademark, i.e., in the course of trade and in accordance with the essential function of the trademark to guarantee the identity of origin of the goods or services for which it has been registered . The mark must be used in the market to designate the goods or services it protects  or to identify and promote those goods or services to the relevant public, even if it is not affixed to the product itself . Genuine use does not include acts preparatory to the exploitation of the mark within an undertaking or its contractors or subcontractors  or the affixing of a mark to a product offered free of charge as a reward for the purchase of other products . The use of a company name or trade name which is limited to identifying a company or indicating a business cannot be regarded as use as a trademark .

Genuine use of the mark must be characterized for each of the goods or services covered by its registration and covered by the application for revocation  and cannot be inferred from use of the mark for similar or analogous goods or services . Promotional use of the mark for press and media activities in the context of a sports sponsorship contract does not constitute genuine use of the mark for sports, cultural, educational, training or entertainment activities . Genuine use of the trademark for a product does not extend to the components of the product . On the other hand, the use of a trademark for the marketing of spare parts may constitute genuine use of a trademark for the products of which the spare parts are an integral part, even if the products themselves are no longer marketed . However, an association cannot claim such use when, without being the proprietor of the mark under which vintage vehicles were marketed, it registers the same mark and uses it for goods or services not covered by its registration .

“Genuine” use of the mark does not imply that it is quantitatively significant. It may be minimal, provided that it is neither sporadic nor symbolic, being solely for the purpose of maintaining trademark rights  , but is justified, in the economic sector concerned for maintaining or creating market shares for the goods or services protected by the trademark . Account must, in effect, be taken of the size of the undertaking, its market power and the nature of the product or service . In the context of the very exclusive market of sales of suitcases and trunks at a premium price, on special orders of unique pieces made according to the customer's preferences, the repair services of twenty-one suitcases and three trunks are sufficient to establish genuine use of the trademark in question . While the use has to be carried out on French territory by virtue of the principle of territoriality of the mark, its territorial importance is only one factor among others to be taken into consideration . It may, in particular, be local without extending across the entire territory, provided that such use is not purely symbolic, minimal, or fictitious . However, it has been held that the sale in France of cosmetic product - mass-market goods in a highly competitive market - over a short period and mainly in a small part of French territory (Réunion Island) does not constitute genuine use, insofar as it does not appear intended to maintain the trademark or to create market share for the products concerned .

Article 11 of the 1964 law initially required a public and non-equivocal use of the trademark. See e.g. Cass. com, 7 October 1986, LawLex202200000437JBJ.

CA Paris, 29 January 2021, LawLex202200002856JBJ; CA Paris, 16 May 2014, LawLex201400002001JBJ; Cass. com. 9 March 2010, LawLex201000000327JBJ; Cass. com. 21 October 2008, LawLex202200000525JBJ; CA Douai, 17 June 2021, LawLex202200000878JBJ.

CA Douai, 17 June 2021, LawLex202200000878JBJ according to which the genuine use of a trademark for ice cream and desserts does not characterize a genuine use of that trademark for the coffee or cocoa contained in those products.

ECJ Case C-40/01 Ansul BV, Judgment of 11 March 2003, LawLex200900000682JBJ.

Cass. com, 11 January 2017, LawLex202200000441JBJ.

CA Paris, 23 November 2021, LawLex202100006039JBJ.

Cass. com, May 24, 2016, LawLex202200000209JBJ; Cass. com, 5 July 2017, LawLex202200000388JBJ; Cass. com, 16 February 2022, LawLex202200002551JBJ; CA Douai, 17 June 2021, LawLex202200000878JBJ; CA Paris, 16 May 2014, LawLex201400002001JBJ; Cass. com. 9 November 2010, LawLex202200000440JBJ; Cass. com. 6 May 2014, LawLex202200000390JBJ.

CA Paris, 7 June 2024, LawLex202400004473JBJ.

Cass. com, 24 May 2016, LawLex202200000209JBJ, acknowledging the serious nature of a use limited to the island of La Réunion and Mayotte.

CA Versailles, 19 September 2024, LawLex202400006893JBJ.

CA Paris, 1 March 2024, LawLex202400002125JBJ.

Cass. com, 21 October 2008, LawLex202200000525JBJ; CA Douai, 17 June 2021, LawLex202200000878JBJ; Cass. com, 30 November 2004, LawLex202200000535JBJ.

CA Paris, 16 May 2014, LawLex201400002001JBJ.

Cass. com, 19 March 2013, LawLex202200000520JBJ.

CA Paris, 27 September 2024, LawLex202400007355JBJ.

CA Paris, 29 January 2021, LawLex202200002856JBJ; Cass. com, 29 January 2013, LawLex202200000534JBJ; Cass. com, 6 December 2017, LawLex201700002051JBJ; Cass. com, 21 February 2012, LawLex202200000523JBJ.

CA Douai, 17 June 2021, LawLex202200000878JBJ.

Cass. com, 22 June 2022, LawLex202200003861JBJ.

Industrial Property Law

187. Genuine use of trademark

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187. Genuine use of trademark

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise