Blocking trade mark (marque de barrage)

A blocking trade mark is a trade mark filed without any intention to use it, for the sole purpose of preventing third parties from using the sign or from occupying its surroundings. Trade mark law does not recognise this notion as such, but captures it through two mechanisms: invalidity for bad faith filing under Article L. 711-2 of the French Intellectual Property Code and revocation for lack of genuine use under Article L. 714-5 IPC. Regulation (EU) 2017/1001 offers the same remedies in Articles 58 and 59.

The lawfulness in principle of filing without immediate use

Neither French law nor EU law requires any intention to use at the time of filing, unlike US law. The proprietor has a period of five years from registration during which the trade mark is protected without any use being required. Filing a sign ahead of a future launch, reserving spelling variants of the main sign or covering goods adjacent to those already marketed is common portfolio management practice and is in no way unlawful. A blocking trade mark becomes open to challenge only where the filing has no purpose other than to cause harm or where it forms part of a strategy to circumvent the genuine use requirement.

The remedies

The first remedy is revocation, which strikes a trade mark not used for five uninterrupted years. It clears the register of dormant trade marks, but only on expiry of the period, and leaves intact a trade mark that has been used for some of its goods. The second is invalidity for bad faith, which does not wait for the period to run. The Court of Justice of the European Union holds that a filing made without any intention to use the trade mark for the goods covered may be in bad faith where the applicant intended to undermine the interests of third parties or to obtain a monopoly for purposes unrelated to the functions of a trade mark, and that such invalidity may be only partial. Repeated refilings of the same sign designed to artificially revive the five year grace period fall under the same analysis.

Practical issues

For the proprietor, the question arises when drafting the specification: a very broad specification protects more but exposes the mark to partial revocation and feeds the bad faith argument where it is plainly unrelated to the business. For the third party held back, a blocking trade mark is attacked through an application for revocation or invalidity before INPI or the EUIPO, often preceded by a clearance search and a use investigation. The mere filing of a trade mark never used is not in itself a fault, so that unfair competition requires additional circumstances.

Key points

Filing without immediate use is lawful for five years, and a reasoned defensive strategy is legitimate. A blocking trade mark falls only through revocation, after five years without use, or through invalidity for bad faith where the filing serves a purpose unrelated to the function of the trade mark. When faced with a troublesome dormant trade mark, check the registration date and gather evidence of non-use before acting.

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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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