Deceptiveness

Deceptiveness is the absolute ground for refusal that applies to a trade mark of such a nature as to deceive the public, in particular as to the nature, quality or geographical origin of the goods or services. It is provided for in Article L. 711-2 of the French Intellectual Property Code, which transposes Article 4 of Directive (EU) 2015/2436, and in Article 7 of Regulation (EU) 2017/1001 for the EU trade mark. It protects the public and not competitors, which is why it can be cured neither by use nor by the inaction of third parties.

Conditions of deception

A trade mark is deceptive where it contains an indication that the relevant public is likely to take as information about a characteristic of the goods, whereas that information is false or does not correspond to the goods designated. The Court of Justice of the European Union holds that refusal presupposes the existence of actual deceit or a sufficiently serious risk that the consumer will be deceived, and not a mere theoretical possibility. Deceptiveness is assessed by reference to the specification of goods and services, so that a sign evoking a material, a place or a quality is accepted if the specification is restricted to goods having that characteristic, and refused if it covers goods that do not.

Relationship with descriptiveness and geographical indications

Deceptiveness and descriptiveness are two sides of the same sign. Where the indication is accurate for the goods designated, the sign is descriptive and refused on that ground, and where it is inaccurate, the sign is deceptive. The geographical name is the ordinary illustration, descriptive for the goods originating from the place, deceptive for the others, and excluded in any event where it infringes a protected designation of origin or geographical indication, which falls under a separate absolute ground. The distinctive character of the sign is no bar to refusal, since an arbitrary mark may be deceptive if it conveys inaccurate information.

Deception arising during the life of the trade mark

In addition to refusal and invalidity, deceptiveness is a ground for revocation where the trade mark, in consequence of the use made of it by its owner or with its consent, has become liable to mislead the public, in particular as to the nature, quality or geographical origin of the goods or services. This revocation sanctions use after registration, for instance relocating production whose place of origin appears in the mark, or changing the composition of a product whose mark extols a particular material. The Court of Justice nonetheless holds that the mere assignment of a surname mark, detached from the person who bore it, does not make the mark deceptive.

Key points

A trade mark that suggests an inaccurate characteristic of the goods or services, such as origin, composition, quality or official approval, is refused or declared invalid, and a trade mark that has become deceptive through use is liable to revocation. The specification of goods is the main lever, since a restriction to goods having the evoked characteristic overcomes the objection. Draft the specification consistently with the sign, and make sure that changes to the goods do not contradict what the trade mark announces.

---

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