Descriptive use of a sign

Descriptive use is the limitation of trade mark rights that allows a third party to use, in the course of trade, indications concerning the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods, as well as signs devoid of distinctive character, even where they correspond to a registered trade mark. Article L. 713-6 of the French Intellectual Property Code enshrines it, as do Article 14 of Regulation (EU) 2017/1001 and Article 14 of Directive (EU) 2015/2436, on condition that the use is in accordance with honest practices.

Rationale and scope

The limitation preserves the general interest in keeping descriptive terms freely available, which trade mark law already pursues upstream through the absolute ground for refusal based on descriptive character. A trade mark may indeed have been registered although it contains a descriptive element, or may have become descriptive as language evolved, or may be distinctive only through its combination or stylisation. The proprietor cannot then prevent competitors from using the term in its descriptive sense to present their own goods. The same logic applies to the use by a natural person of his or her own name or address, and to the use of non distinctive signs.

The distinction from use as a trade mark

Everything turns on the function of the sign as used. Use is descriptive where the public perceives the term as information about the goods, and not as an indication of their commercial origin. The presentation of the sign is decisive: a term embedded in an explanatory sentence, in ordinary lettering, next to the third party’s own trade mark, is descriptive, whereas the same term standing alone, highlighted, stylised or reproduced in the typeface of the trade mark functions as a trade mark and loses the benefit of the limitation. The Court of Justice of the European Union also assesses the honesty of the use, which is lacking where the third party gives the impression of a commercial connection with the proprietor, takes advantage of the reputation of the trade mark or disparages it.

Common situations

Descriptive use is relied on for generic or allusive terms incorporated in composite trade marks, for indications of origin, for designations of varieties, materials or processes, for foreign terms whose meaning is understood by the relevant public, and in online referencing, where using a descriptive term as a keyword is not in itself prohibited. Where the trade mark as a whole has become the common name of the product, the limitation is coupled with the threat of revocation for genericness, which penalises a proprietor who remains passive while its sign becomes commonplace.

Key points

A descriptive term remains available to all, even if it forms part of a registered trade mark, provided it is used to inform about the goods rather than to identify them, and in a fair manner. The presentation of the term makes the difference between descriptive use and infringement. The term should be used in ordinary lettering, within a sentence, alongside one’s own trade mark, and the proprietor’s lettering should never be copied.

---

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