Lexicon > Trademark degeneration

IP Lexicon

Trademark degeneration

In law, a trademark is a distinctive sign whose essential function is to indicate to the consumer the origin of the good(s) and/or service(s) it designates so that he can distinguish them from those offered by third-party companies.

The degeneration of a trademark is the phenomenon by which a trademark becomes, after the filing, the usual designation of a good or a service, so that it is no longer able to fulfill its original identification function .

Thus, the article L.714-5 of the Intellectual Property Code provides that “The owner of a mark who, without good reason, has not made genuine use of it, in respect of the goods or services for which the trademark is registered, for an uninterrupted period of five years, shall forfeit his rights.”

In the reality of a company’s business life, it is often difficult to anticipate from the beginning of the activity how a sign can be appropriated by the public.

Victim of its success, a trademark may become the usual designation of  good(s) and/or service(s) and thus lose its distinctive character when, because of its owner (natural or legal person), the average consumer assimilates it almost automatically to the designated  good(s) and/or service(s).

Indeed, when a trademark is used as a common or generic name to designate  good(s) and/or service(s), it risks degenerating.

However, the revocation of a trademark for degeneration sanctions the owner’s inaction in defending his rights.

Therefore, it is only if the owner has not acted and defended his intellectual property title correctly that the revocation will be incurred.

It is indeed because the owner of the registered trademark did not act against third parties using his trademark that its use spread and was finally adopted by the majority of the public, as was the case for the following signs

  • VINTAGE to designate clothing (Paris Court of Appeal, April 20, 2005);
  • BOTOX to designate anti-aging preparations (Paris Court of Appeal, January 19, 2007);
  • CITY STADES to designate transportable sports infrastructures (EUIPO, Cancellation Division, November 29, 2021, Case C-48/999).

However, if the owner can prove that he has actively fought against the use of his trademark, the revocation action for degeneration can be overcome so that his registration will be maintained.

Taking an active part in the defense of one’s rights and reacting to third party infringements in one or more countries is therefore of utmost importance for successful trademark owners.

Case law focus

In France, the trademark “Pina Colada” was cancelled in 2004 because the owner was “The company “remained totally passive in the face of the widespread use of the expression “pina colada” to designate an alcoholic cocktail made from fruit juice. (Cass. com., April 28, 2004, n°02-10.505)

Case law focus

In its decision of January 27, 2021, the “Cour de cassation” censured the decision of the appeal judges pronouncing the degeneration of the LES DUNES trademark when it was reported that its owner ” had actively contributed to the defense of its trademark by issuing several formal notices against bakeries or supermarkets having used the term “DUNE BLANCHE” and by obtaining from them the commitment not to infringe its trademark anymore […]”. (Cass. com., January 27, 2021, n°19-12.040).

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