Lapse of trademark
“The owner of a mark who, without good reason, has not made genuine use of it for the goods or services for which the mark is registered for an uninterrupted period of five years shall forfeit his rights. The starting point of this period shall be set at the earliest on the date of registration of the mark in accordance with the procedures specified by a decree of the Council of State.
The following shall be deemed to be use within the meaning of the first paragraph
(1) use made with the consent of the owner of the mark;
(2) use by a person authorized to use the collective mark or guarantee mark;
(3) use of the mark, by the owner or with his consent, in a modified form that does not alter its distinctive character, whether or not the mark is registered in the owner’s name in the form used;
4° The affixing of the mark to goods or their packaging, by the owner or with his consent, exclusively for export.”
Under these conditions, the owner of the trademark is obliged to use the trademark at the end of a period of five years following the filing of the trademark, which is sanctioned by the forfeiture of the rights.
In order to prove genuine use, it is necessary to be able to demonstrate use of the trademark in the market of the good(s) and/or service(s) and not only preparatory acts. Furthermore, the use should not be sporadic or accidental.
Article L.714-6 of the Intellectual Property Code provides for other cases of forfeiture:
“The owner of a trademark that has become, by his own doing, :
- (a) The name customary in the trade of the product or service;
- (b) Likely to mislead, particularly as to the nature, quality, or geographic origin of the product or service.”
Thus, the rights attached to a trademark may be lost when the mark has become, through its owner, either the common designation of the good(s) and/or service(s) in commerce (degeneration of the trademark), or a sign liable to mislead, in particular as to the nature, quality or origin of the goods, or a sign liable to mislead as to the nature, quality or origin of the good(s) and/or service(s).
Whether it is for lack of geniune use or for another reason (degeneration or a sign likely to mislead), revocation is a sanction that leads to the loss of the trademark right.
Revocation is not automatic and can only be pronounced following a revocation action filed before the Intellectual Property Offices (INPI for France, EUIPO for the European Union etc…) or before the Courts under certain conditions.
Indeed, since Ordinance No. 2019-1169 of November 13, 2019 transposing Directive (EU) No. 2015/2436 of December 16, 2015 (” Trademark Package”), claims before the Courts, based on revocation, are only possible on a counterclaim basis or in certain other specific circumstances.
Faced with such actions, the owner of the contested trademark may indeed ask its opponent to provide evidence of use of its earlier trademark in order to justify its geniune use.
If you do not prove the exploitation of your trademark, the initial action will not be successful.
Point of jurisprudence
The Scotch Whisky Association aims to protect and defend Scotch whisky. It sued the company Les grands chais de France and the company G 20, which marketed a whisky called “Cromwell’s rare blended whisky” for revocation, considering that the presentation of their whisky was likely to mislead the consumer as to the geographical origin of the product and that the mark “Cromwell’s” had degenerated into a misleading mark.
However, the ‘Cour de cassation’ considered that the Court of Appeal had, in its decision, rightly retained that the forfeiture was not incurred in that the contested presentation was not misleading, because it was not ” of such a nature as to establish a link in the mind of the consumer between Scotland and the beverage in question ” and that ” the name “Cromwell” evokes the historical past of England “.
Under these conditions, ” the overall presentation of “Cromwell’s rare blended whisky”, does not lead the moderately attentive public to attribute a Scottish origin to this product, is not such as to create a risk of confusion in the mind of the public. (Cass. com., November 28, 2006, n°04-14.124).
The Bouchara Law firm assists you in particular in :
- Protection and defense of your distinctive signs(prior art search, monitoring, filing of your intellectual property titles, follow-up of the registration procedure, infringement action, seizure procedure etc.);
- Initiation of forfeiture actions;
- Engaging in revocation actions ;
- Defending your trademarks in such actions.