Industrial Property Law

The proprietor of a trademark that has by its own making become the customary designation in the trade of the product or service is liable to forfeiture of the trademark rights (Art. L. 714-6, a) IP Code) . This is only incurred for goods or services for which the use of the mark has become standard .

A trademark becomes customary when it is perceived by the relevant public, consisting of final users and consumers of the goods or services in question, as a generic name for those goods or services , and not as an indication of origin.

The proprietor only loses his rights if the dilution of the trademark is the result of inaction in the face of its generic use , and not of the conclusion of trademark coexistence agreements . Revocation will be avoided if the proprietor can prove that he has repeatedly opposed the unlawful use of his trademarks, that he has initiated several court proceedings to defend them and signed protocols with competitors .

The proprietor of a trademark may seek, on the basis of Article 1240 of the Civil Code, the liability of a third party who uses the trademark in a way that may contribute to its dilution into a generic mark. Such a wrongful use is not characterized when a newspaper publisher uses the term in articles as a metaphor .

See e.g. Cass. com, 17 March 2009, LawLex202200000516JBJ.

Cass. com, 17 March 2009, LawLex202200000516JBJ.

Cass. com. 14 May 2013, LawLex202200000444JBJ.

Cass. com, 14 May 2013, LawLex202200000444JBJ; Cass. com, 28 April 2004, LawLex202200000530JBJ.

Cass. com, 1 April 1997, LawLex202100005943JBJ.

CA Paris, 14 October 2016, LawLex202200003953JBJ.

Cass. com, 1 March 2017, LawLex202200000381JBJ.

194. Customary marks