Absolute grounds for refusal

Absolute grounds for refusal are the grounds that preclude the registration of a sign as a trade mark by reason of its own characteristics, irrespective of any earlier right of a third party. They are listed in Article L. 711-2 of the French Intellectual Property Code, which transposes Article 4 of Directive (EU) 2015/2436, and, for the EU trade mark, in Article 7 of Regulation (EU) 2017/1001. They are examined by the office of its own motion and may be relied on by any interested person in an invalidity action.

List of grounds

The texts cover a sign that cannot constitute a trade mark because it cannot be represented clearly and precisely, a trade mark devoid of distinctive character, a trade mark consisting exclusively of elements describing the goods or services, a trade mark consisting exclusively of elements that have become customary in current language or in the bona fide and established practices of the trade, a sign consisting exclusively of the shape or another characteristic which results from the nature of the goods, which is necessary to obtain a technical result or which gives substantial value to the goods, emblems and official signs protected by Article 6ter of the Paris Convention, a trade mark contrary to public policy or accepted principles of morality, a trade mark of such a nature as to deceive the public, signs excluded by the protection of designations of origin, geographical indications, traditional terms for wine, traditional specialities guaranteed and plant variety denominations, and finally a trade mark filed in bad faith.

Assessment of the grounds

Each ground is assessed independently, by reference to the goods and services designated and to the perception of the relevant public. The grounds based on lack of distinctiveness, descriptiveness and customary character are the most frequent. They can be overcome by proof of distinctiveness acquired through use. The other grounds, in particular the exclusion of the shape dictated by technical function, deceptiveness and bad faith, cannot.

Litigation over absolute grounds

Before INPI, the absolute ground is raised against the applicant by the examiner, who invites the applicant to submit observations before any rejection decision, which may be appealed to the court of appeal. After registration, a declaration of invalidity on an absolute ground may be sought before INPI or before the Judicial Court by any interested person, and by way of counterclaim by the defendant to an infringement action. Since the 2019 reform, this action is not subject to any limitation period. The relevant date for the assessment is the filing date, except for acquired distinctiveness, which may be established after registration.

Key points

Absolute grounds for refusal sanction the intrinsic defects of the sign: lack of distinctiveness, descriptiveness, customary character, functionality, deceptiveness, conflict with public policy, infringement of official signs or geographical indications, and bad faith. They are examined by the office of its own motion, may be relied on in invalidity proceedings without any time limit, and only the first three can be overcome through use. Test the sign against each ground before filing and, for weak signs, build the file of use from the outset.

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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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