Use as a trade mark

Use as a trade mark refers to the use of a sign to distinguish goods or services and to indicate their commercial origin. It is a precondition for infringement, since Article L. 713-2 of the French Intellectual Property Code and Article 9 of Regulation (EU) 2017/1001 prohibit only the use of a sign “in relation to goods or services”. It differs from use in the course of trade, a related condition that places the act in a commercial context, and from the genuine use required of the proprietor to maintain the right.

The test of harm to the functions of the trade mark

The Court of Justice of the European Union (CJEU) holds that the proprietor may object to the use of a sign only if that use affects or is liable to affect the functions of the trade mark. The function of indicating origin comes first, but in cases of double identity protection extends to the advertising, investment, communication and quality functions. The court therefore examines whether the public perceives the sign as designating the origin of the goods, or sees it merely as decoration, information or a simple reference.

Uses outside the exclusive right

The use of a sign perceived by the public as a purely decorative motif, unconnected with the trade mark, the use of a company name or trade name to designate a business unrelated to the goods it sells, or the use of a word in its ordinary meaning may fall outside the prohibition. The CJEU nonetheless accepts that the use of a company name becomes use in relation to goods where the third party affixes it to them or establishes a link between that sign and the goods it sells. The Code also provides for limitations in favour of descriptive use of the sign and of use necessary to indicate the intended purpose of a product, in particular accessories or spare parts, provided it is in accordance with honest practices in industrial or commercial matters.

Use as a trade mark in litigation

The characterisation is debated in trade mark infringement actions and often determines the outcome of the dispute. It receives specific treatment online, where the CJEU considers that an advertiser selecting a keyword corresponding to a trade mark uses the sign, unlike the provider of the referencing service. The burden of proof lies on the claimant, who must establish through official reports or commercial documents how the sign is presented to the public, its position on the product or packaging and the context of the offer.

Key points

Use as a trade mark requires the sign to be used in relation to goods or services and perceived as indicating their origin. Decorative, descriptive or purely referential use in principle falls outside the exclusive right, subject to a case by case assessment. Before taking action, the presentation of the sign to the public should be precisely documented and the likely perception of the relevant public assessed. In defence, the argument deserves examination from the outset, as it may make it unnecessary to discuss likelihood of confusion.

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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.

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