Industrial Property Law

Genuine use includes the use of a trademark by the proprietor or with the latter's consent in a modified form that does not alter its distinctive character (Article L. 714-5, para. 2, 3° IP Code) . This is the case when the mark is used within a name in which the mark is highlighted and constitutes its distinctive element , when the verbal element of the mark is used without the figurative element …

Use in a form that does not alter distinctive character

Genuine use includes the use of a trademark by the proprietor or with the latter's consent in a modified form that does not alter its distinctive character (Article L. 714-5, para. 2, 3° IP Code) . This is the case when the mark is used within a name in which the mark is highlighted and constitutes its distinctive element , when the verbal element of the mark is used without the figurative element, as long as it is the dominant distinctive element , for the use of the verbal element which constitutes the distinctive element alone or in a logo , the use of the trademark to designate a section in a supermarket relating to the sale of dairy products, such as cheese, for which it was registered , or the use of an umbrella trademark whose function is to identify, for consumers, various products placed on the market, grouped within the same product line to allow them to benefit from the reputation and image of the umbrella brand while giving them a specific identity that facilitates communication .

On the other hand, when the mark used differs from the registered mark in such a way as to alter its distinctive character, genuine use is ruled out because the mark is not used in accordance with its essential function as a guarantee of origin . This is the case of the use of the mark accompanied by a stylized cross of Lorraine substituted for the dragonfly appearing in the application , of a slogan extracted from the mark which does not constitute the distinctive element of the mark, in spite of the distinctive character of the slogan itself  or of the sign accompanied by additions which change the overall perception of the mark .

Use of the mark in an modified form that does not alter its distinctive character is considered genuine use even if the sign in question is the subject of a separate registration (Art. L. 714-5, para. 2, 3° IP Code). This clarification was added by the Ordinance of 13 November 2019 following a national and European development in case law. Initially, the Court of Cassation had at times accepted the genuine use of the mark even if the similar sign used was the subject of a separate registration  and at other times refused such use on account of the registration of the sign in question , finding notably that by registering various marks, the proprietor intended to distinguish them .  In a judgment of 13 September 2007 , the Court of Justice held that if the use of the similar mark invoked is the subject of a separate registration, its use cannot constitute genuine use and revocation must be declared. It partially reversed its position in a judgment handed down on 25 October 2012, stating that the use of a trademark in an altered form allows its owner to escape the revocation of its rights notwithstanding the fact that the different form in which the trademark is used is itself registered as a trademark. However, in the case of a family or series of marks, the use of one mark cannot be invoked to justify the use of another, as long as the purpose is to establish the use of a sufficient number of marks of the same family . The Court of Cassation has followed the approach of the Court of Justice, stating that the registration of the mark used does not prevent the characterization of genuine use , except in the case of a family or series of marks .

See e.g. Cass. com, 14 March 2006, LawLex202200000445JBJ; Cass. com, 15 March 2011, LawLex202200000447JBJ; CA Paris, 16 May 2014, LawLex201400002001JBJ; Cass. com, 3 June 2014, LawLex202200000384JBJ; Cass. com. 12 May 2015, LawLex202200000442JBJ; CA Paris, 24 January 2017, LawLex202100004731JBJ; CA Paris, 23 November 2021, LawLex202100006039JBJ.

CA Poitiers, 30 January 2001, LawLex200200000671JBJ.

Cass. com, 14 March 2006, LawLex202200000446JBJ; Cass. com, 14 March 2006, LawLex202200000445JBJ; Cass. com, 14 March 2006, LawLex202200007993JBJ; Cass. com, 15 March 2011, LawLex202200000447JBJ.

Cass. ass. plenary, 16 July 1992, LawLex202200000382JBJ; Cass. com. 16 February 2010, LawLex202200000449JBJ; Cass. com. 12 June 2012,  LawLex201200000911JBJ.

Cass. com, 16 February 2010, LawLex202200000449JBJ.

ECJ Case C-234/06 Il Ponte Finanziaria SpA, Judgment of 13 September 2007, .

CJEU Case C-234/06 Rintisch v Eder, Judgment of 13 September 2007, LawLex201200002243JBJ: which bases its judgment on Article 5(C)(2) of the Paris Convention for the Protection of Industrial Property, according to which: “Use of a trademark by the proprietor in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered in one of the countries of the Union shall not entail invalidation of the registration and shall not diminish the protection granted to the mark”.

Cass. com, 3 June 2014, LawLex202200000384JBJ; Cass. com, 12 May 2015, LawLex202200000442JBJ; CA Paris, 23 November 2021, LawLex202100006039JBJ.

Cass. com, 19 January 2016, LawLex202200000451JBJ; CA Paris, 17 December 2021, LawLex202200007081JBJ.

Cass. com, 16 February 2016, LawLex202200000450JBJ.

Cass. com., 15 May 2024, LawLex202400003701JBJ.

CA Versailles, 19 September 2024, LawLex202400006893JBJ.

CA Lyon, 26 September 2024, LawLex202400007231JBJ.

Cass. com, 9 March 2010, LawLex201000000327JBJ.

CA Paris, 3 December 2008, LawLex2010000408JBJ.

Cass. com, 20 June 2006, LawLex202200000519JBJ.

CA Paris, 21 October 2011, LawLex201100001766JBJ.

Industrial Property Law

189. Use in a form that does not alter distinctive character

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189. Use in a form that does not alter distinctive character

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Les décisions de justice citées dans ce paragraphe :

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