Distinctiveness acquired through use

Distinctiveness acquired through use is the mechanism by which a sign initially devoid of distinctive character, descriptive or customary acquires, through the use made of it, the capacity to identify the goods or services of an undertaking, and thereby becomes capable of registration or of withstanding invalidity. 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. It does not operate for the other absolute grounds, in particular functional shape, deceptiveness or conflict with public policy.

Conditions of acquisition

A sign acquires distinctive character where a significant proportion of the relevant public, because of the use made of it, identifies the goods or services as originating from a particular undertaking by means of that sign. The Court of Justice of the European Union holds that this assessment is a global one and takes into account the market share, the intensity, geographical extent and duration of use, the amount invested in advertising and the proportion of the public that identifies the origin by means of the sign. The use must be use of the sign as a trade mark, and not as a mere descriptive or decorative element, and it may result from the use of the sign in combination with another mark, provided the public attributes the function of indicating origin to the sign alone.

Time and territory of acquisition

Distinctiveness may be acquired before filing, in which case the sign is registrable, or after registration, in which case the trade mark can no longer be declared invalid for lack of distinctiveness, a solution enshrined in Article 59 of Regulation (EU) 2017/1001 and adopted in French law since the 2019 reform. Territorially, acquisition must be established in the part of the territory in which the sign lacked distinctiveness. For the EU trade mark, the Court of Justice requires distinctiveness to be shown in all the Member States in which the sign lacked it, although evidence covering several States forming a single market may suffice. This requirement makes acquisition difficult for an EU trade mark, and often leads to a preference for national filings for weak signs.

Practical and litigation stakes

Acquired distinctiveness is the ordinary route to protection for colour marks, three-dimensional marks, position marks and pattern marks, and for descriptive terms that have become the names of flagship products. It is prepared well before filing, through consistent exploitation of the sign alone, advertising campaigns that showcase it, and the collection of sales figures, market shares and brand awareness studies. In defence to an invalidity action, the owner bears the burden of proof, and the lack of dated documentation is the most frequent cause of failure.

Key points

A descriptive, customary or commonplace sign may become a valid trade mark if a significant proportion of the public identifies it, through use, as a sign of origin, before filing or even after registration. The evidence, assessed globally and territory by territory, rests on the duration and intensity of use, investment and surveys. Build this file from launch, exploit the sign alone and as a trade mark, and consider national filings where proof at Union level is out of reach.

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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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