Trade mark revocation action (action en déchéance)

A trade mark revocation action seeks a finding that the rights in a registered trade mark have been lost on a ground arising after registration. The French Intellectual Property Code provides for three main grounds: absence of genuine use for an uninterrupted period of five years (Article L. 714-5 IPC), the sign becoming the common name of the product or service as a result of the proprietor’s conduct, and deceptiveness acquired through use (Article L. 714-6 IPC). These grounds transpose Directive (EU) 2015/2436.

Allocation of jurisdiction

Since the reform introduced by the 2019 ordinance, a principal claim for revocation falls within the jurisdiction of INPI, under the administrative invalidity and revocation procedure, where the claim is brought as a principal claim and is not connected with any other claim. The judicial court retains jurisdiction where revocation is sought by way of counterclaim in an infringement action, where it is connected with another claim falling to the court, or where evidentiary or provisional measures are pending. This allocation calls for careful consideration of strategy before any filing.

Conditions of revocation for non-use

A proprietor who, without proper reasons, has not put the trade mark to genuine use for the goods or services covered for five years is liable to revocation. Use in a form differing in elements which do not alter the distinctive character, and affixing the trade mark to goods intended for export, are treated as use. The burden of proving use lies on the proprietor, who must produce dated and localised evidence. Use commenced or resumed within the three months preceding the claim, after the proprietor became aware that an action might be brought, is disregarded. Revocation may be partial and affect only some of the goods or services.

Effects over time

Revocation takes effect on the date of the claim or, if a party so requests, on the date on which the ground for revocation arose, which matters where revocation is raised as a defence to an infringement action concerning earlier acts. The five year period starts from publication of the registration, not from filing. A decision that has become final is entered in the register and has effect against all.

Key points

Revocation sanctions the absence of genuine use for five years, the sign becoming generic or acquired deceptiveness. A principal claim falls to INPI, a counterclaim to the judicial court. Before bringing an infringement action, check that the trade mark relied upon would withstand a counterclaim for revocation and build a file of evidence of use organised by product, territory and period.

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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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