Industrial Property Law

Any natural or legal person may file a trademark revocation application before the INPI based on Articles L. 714-5, L. 714-6, L. 715-5 or L. 715-10 of the Intellectual Property Code. Revocation serves a public interest objective, namely to make available for free competition a sign protected by an exclusive trademark right but not used in the course of trade, which allows the applicant for revocat …

Applicant for revocation

Any natural or legal person may file a trademark revocation application before the INPI based on Articles L. 714-5, L. 714-6, L. 715-5 or L. 715-10 of the Intellectual Property Code. Revocation serves a public interest objective, namely to make available for free competition a sign protected by an exclusive trademark right but not used in the course of trade, which allows the applicant for revocation to bring proceedings before the Director General of the INPI without having to account for the reasons for doing so .

Any person who can demonstrate an interest in bringing an action (Article L. 716-3 IP Code), i.e., that the application seeks to remove an obstacle to the use of the mark in the context of his or her economic activity, may bring the application before the judicial courts as defined by regulation . Such an obstacle is established as soon as the two undertakings in question are competitors and pursue the same commercial activity . The applicant for revocation can only act if he or she exercises in the sector of activity that falls within the field of the goods or services of the mark for which revocation is sought  and if the mark has been registered in the field at issue . The application for revocation must concern goods and services that the mark designates .  In the event of a counterclaim, the applicant may only act in respect of the goods or services that are the subject of the infringement action and those that fall within the same sector of activity  or are identical or similar to them . The revocation action is admissible even if there are obstacles of another nature to the use of his mark by the plaintiff , and even if, by the filing of his mark, he has infringed the mark whose revocation is sought, this infringement being subject to the examination of the merits of the conditions of use of the mark . On the other hand, the transferor of a trademark is precluded from bringing an action for revocation against the transferee .

A party who, at first instance, has filed an application for invalidation of a trademark, is entitled to apply for the first time on appeal for a declaration of revocation of the rights to that trademark. In effect, an application for revocation of rights in a mark has the same purpose as an application for invalidation, i.e. to remove, at the end of an uninterrupted time-limit of five years without serious use of the mark, the obstacle that the mark represents for the applicant's activity .

CA Paris, 18 September 2024, LawLex202400006792JBJ.

Cass. com, 20 November 2012, LawLex202200000522JBJ; Cass. com, 18 May 2010, LawLex202200000518JBJ; Cass. com, 31 May 2005, LawLex202200003517JB; Cass. com, 4 October 2016, LawLex201600001718JBJ: the municipality of which the name has been registered as trademarks to designate goods and services covering almost all classes justifies an impediment to the free use of its name for the exercise of its activities.

Cass. com, 31 January 2006, LawLex202100005263JBJ.

Cass. com, 16 February 2022, LawLex202200002551JBJ.

Cass. com, 24 June 2014, LawLex202200007994JBJ.

Cass. com. 13 January 2009, LawLex200900000114JBJ; Cass. com. 31 May 2005, LawLex202200003517JBJ.

CA Poitiers, 30 January 2001, LawLex200200000671JBJ.

Cass. com, 16 February 2022, LawLex202200002551JBJ; CA Poitiers, 30 January 2001, LawLex200200000671JBJ.

Cass. com, 26 January 2022, LawLex202200007995JBJ.

CA Paris, 16 May 2017, LawLex201700000905JBJ.

Cass. com, 7 June 2006, LawLex202200000435JBJ; Cass. com, 4 October 2011, LawLex202200000387JB, according to which an undertaking justifies an interest in counterclaiming for revocation when the trademarks at issue constitute an obstacle to the exploitation in France of its Community trademark, even if it has been declared lapsed for the French part of its international trademark of the same name.

Cass. com, 18 May 2010, LawLex202200000518JBJ, in this case, the Court of Appeal had declared the applicant in the revocation action inadmissible on the grounds that by filing the trademark at issue for tobacco products, it had blocked the exploitation by the defendant of its earlier trademark, because of the ricochet effect resulting from the application of the legislation relating to tobacco regulation, which prohibits any propaganda or indirect advertising of a product or article other than tobacco.

Industrial Property Law

197. Applicant for revocation

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

197. Applicant for revocation

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise