Trademark revocation for lack of serious use: a new strategic weapon

In December 2019, Ordinance No. 2019-1169 and its implementing decree No. 2019-1316 came into force, transposing Directive 2015/2436 known as the “Trademark Package”. This reform substantially modified French trademark law, in particular by making it possible to file new categories of trademarks, by modifying the procedures and by extending the powers of the National Institute of Industrial Property (INPI).

A few years later, the study of case law highlights a consequence of this transposition anticipated by specialists but insufficiently anticipated by trademark owners : the strategic use of trademark revocation for lack of genuine use.

Application for revocation for lack of genuine use despite the absence of interest in acting

Le trademark registration with the INPI confers on its holder a monopoly of use of this sign to designate the products and services for which the mark is registered. This only makes sense insofar as this mark is actually exploited. Failing this, there is no justification for third parties to be deprived of the possibility of using it. This is why the Intellectual Property Code provides in its article L 714-5 that: 

« Incurs the forfeiture of his rights the holder of the mark who, without just cause, has not made serious use of it, for the products or services for which the mark is registered, for an uninterrupted period of five years. » 

It was already provided for by French law that the owner of the mark had five years after its registration to make genuine use of it. However, the reform brings a novelty of great importance by now providing that any person, without having to justify an interest in acting, can make this request for revocation for lack of serious use before the INPI.

The absence of the need for an interest in acting is strategic since a company can quite monitor the use that one of its competitors makes of its brand and request its cancellation after an absence of use for 5 years. The fact that the competitor is the plaintiff does not, in itself, constitute an attitude of bad faith. Indeed, this consists of the intention to illegitimately prevent a third party from using a sign necessary for its activity. As the INPI regularly reminds us, bad faith is characterized by proof of unfair intent and cannot arise from the mere fact that the competitor is the plaintiff.

There are therefore now many requests for revocation for lack of serious use before the INPI. The vast majority of decisions rendered in this context effectively pronounce at least partial revocation of the mark.

Indeed, the INPI assesses the use of the mark quite strictly since the demonstration of the use of the mark for similar products or services is not sufficient to justify the use of the registered products or services. The trademark owner must therefore be able to prove use:

• to guarantee to the consumer the identity of origin of the products and services (this is a use " as a brand », conversely the use of the sign in a simple internal document is not enough),
• of the sign as registered or in a version that does not alter its distinctive character (pay attention to the figurative marks used with new logos, etc.),
• on a specific date (for example by attaching the corresponding invoices to an advertisement),
• for the goods or services named in the registration (and not for similar goods)
• by itself or by an authorized third party (contract with a licensee attached to proof of use by the latter, etc.).

Compiling a proof of use file is therefore a tedious, time-consuming task, monopolizing part of the trademark holder's human resources.

Anticipating the increased risk of forfeiture for lack of serious use

Because of this trend, new reflexes must be acquired by trademark practitioners but also by the owners themselves. 

Analyze brand portfolio and consider partial waiver

It is strongly recommended that trademark holders monitor their portfolio of rights and verify that they can fully justify the use of trademarks registered for more than five years. In this context, it is important to keep a complete proof of use file that meets the criteria listed above. As a reminder, it should be verified that use can be proven for each product and service registered. 

Failing this, a strategic reflection is necessary according to the needs of the brand owner.. The latter may, for example, prefer to partially renounce his trademark for the products and services that he ultimately does not use in order to avoid publicity and the cost that a revocation action against him would generate.

Create a proof of use file before any opposition or litigation

As part of the opposition procedure to the registration of a trademark, the INPI now has a stronger role in examining evidence of use of the mark history on which the opposition is based. This will only be deemed registered for goods and services for which genuine use can be proven by the opponent. If it was previously sufficient for him to demonstrate use of the mark for one of the goods or services on which the opposition was based, he must now prove use for each of the goods and services on which the opposition is based. Failing this, it will be considered inadmissible and will expose itself to the forfeiture of its mark. The trademark holder wishing to oppose must therefore ensure that he will be able to provide all the proof of use that will be required of him.

Lack of serious use also weakens the trademark owner wishing to sue for infringement before the courts. In fact, the defendant in the action for infringement will most likely ask the owner of the mark who has sued him to provide proof of genuine use of the latter (unless the said mark was registered less than 5 years). Otherwise, the claim for infringement will be considered inadmissible. 

The trademark holder should therefore be aware of the fact that, in the context of any procedure, he will probably be asked in return to prove his use. Before even considering sending a formal notice to put an end to acts of infringement, he must therefore check that he has a solid file of proof of use. Failing this, he directly exposes himself to forfeiture for lack of serious use. 

Make sure your contact details are up to date

It often happens that the contact details of the trademark holder are not up to date with the INPI. This can be very problematic since the INPI informs the holder of the request for revocation against his mark by simple mail sent to the address he has. If the contact details are not up to date, the holder never receives this simple letter, yet the procedure before the INPI is ongoing. The proprietor of the trademark will therefore not be able to defend. Unfortunately, it regularly happens that the INPI ends up pronouncing the revocation of a trademark without the holder of the latter having been informed of this procedure and therefore having defended himself. It is therefore particularly important to check that the contact details available to the INPI are up to date.

Take care of your deposit

If the trend was previously for trademark registration covering the widest possible list of products and services, it is different today. For all new trademark filings, it will now be appropriate to designate only the products and services that will actually be used. While it is always tempting to use general labels in order to include as many products and services as possible, it will be necessary to ensure that the designation is sufficiently clear and precise in order to allow any person to determine on this basis the extent of the protection conferred.

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More than ever, the monopoly granted to the owner of the mark is "challenged". The latter must, at each stage of the life of his brand, question himself about the use he makes of it, has made of it or plans to make of it. The brand has certainly grown in size and is now part integral to strategic management of the companye.