Trade mark revocation

Revocation of a trade mark is the loss of the right in a registered trademark because of an event occurring after registration. It differs from invalidity, which sanctions a defect existing on the filing date. The grounds for revocation are set out in Articles L. 714-5 and L. 714-6 of the Intellectual Property Code. Revocation is the most frequent defence of a defendant to an infringement action, together with invalidity.

Revocation for lack of genuine use

An owner who, without proper reason, has not made genuine use of the mark for the goods or services designated during an uninterrupted period of five years is liable to revocation. First, the use must be genuine, that is real and consistent with the function of the mark, to create or preserve an outlet, and not token. Next, it must relate to the registered goods or services: revocation may be partial. Finally, use in a modified form that does not alter the distinctive character, or affixing on goods intended for export, counts as use. Commencement or resumption of use in the three months preceding the application, after the owner became aware that the application might be filed, is disregarded. The texts can be consulted on Légifrance.

Revocation for genericism or deception

The mark is also liable to revocation where, as a result of the owner’s activity or inactivity, it has become the common name in the trade for the product or service, or where it has become liable to mislead the public, in particular as to the nature, quality or geographical origin. The owner must therefore monitor the use of its mark by third parties and react to generic uses, in particular in dictionaries and the press.

Procedure and effects

Since 2020, a principal application for revocation is brought before theINPI, whose decision may be appealed to the Paris Court of Appeal. The judicial court remains competent where revocation is sought by way of counterclaim in an infringement action or in a related manner. The burden of proving use lies with the owner. Revocation takes effect on the date of the application or, on request, on the date the ground arose. In practice, the firm acts in these proceedings, for applicants and defendants, as part of its practice in intellectual property.