Invalidity of a trade mark

Invalidity is the sanction that retroactively annuls the registration of a trade mark which did not, on its filing date, satisfy the conditions of validity. Article L. 714-3 of the French Intellectual Property Code provides that a registration that does not comply with Articles L. 711-2 and L. 711-3 IPC is declared invalid by a court decision or by a decision of the Director General of INPI. For the European Union trade mark, the absolute and relative grounds for invalidity are set out in Articles 59 and 60 of Regulation (EU) 2017/1001.

The grounds for invalidity

Absolute grounds relate to the sign itself: lack of distinctive character, descriptive or customary character, a shape imposed by the nature or function of the goods, deceptiveness, conflict with public policy, infringement of a protected geographical indication, and bad faith on the part of the applicant. Relative grounds relate to the existence of an earlier right: an earlier trade mark giving rise to a likelihood of confusion, a trade mark with a reputation, a company name, trade name or domain name known in the territory, copyright, a design, a personality right or the name of a local authority. Only the holder of the earlier right may rely on a relative ground, whereas any interested person may rely on an absolute ground.

The effects of invalidity

Invalidity operates retroactively, the trade mark being deemed never to have existed. It may be partial and affect only certain goods or services. It is enforceable against all once the decision is recorded in the register. The proprietor of the invalidated trade mark loses the benefit of infringement actions brought on its basis, and royalties received under a licence may give rise to debate, contracts performed in good faith before the decision being in principle maintained. Since 2019, the invalidity action has not been subject to any limitation period, subject to acquiescence and to the defence based on the lack of genuine use of the earlier trade mark relied upon.

The allocation of jurisdiction

Since 1 April 2020, the administrative procedure before INPI has been the exclusive route for invalidity applications brought as a principal claim on absolute grounds or on certain earlier rights, in particular a trade mark, a company name, a trade name or a domain name. The judicial court retains jurisdiction where invalidity is based on copyright, a design or a personality right, where it is sought by way of counterclaim in an infringement action, or where evidentiary or provisional measures are at stake. For the European Union trade mark, the application is filed with the EUIPO or brought by way of counterclaim before a European Union trade mark court.

Key points

Invalidity sanctions an original defect in the trade mark and erases it retroactively, in whole or in part. It is now sought before INPI for most grounds, and before the court in the reserved cases or by way of counterclaim. Before bringing an infringement action, the strength of one’s own trade mark should be audited, since a counterclaim for invalidity is the most common response.

---

This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

Intellectual property attorney · Tell us about your situation