Genuine use of a trade mark

Genuine use refers to the actual exploitation of the trade mark, consistent with its function of identifying the origin of goods or services, which allows the proprietor to retain the right. Article L. 714-5 of the French Intellectual Property Code exposes to revocation a proprietor who, without proper reasons, has not made genuine use of the trade mark for the registered goods or services during an uninterrupted period of five years. Article 18 of Regulation (EU) 2017/1001 and Article 16 of Directive (EU) 2015/2436 lay down the same requirement.

The criteria of genuine use

The Court of Justice of the European Union holds that use is genuine where it serves to create or preserve an outlet for the goods or services, as opposed to token use for the sole purpose of maintaining the right. The assessment takes account of the nature of the goods, the characteristics of the market, and the scale and frequency of use. A modest volume may suffice if it corresponds to real commercial exploitation, whereas a one-off campaign without actual sales may not. Use must be public and outward facing, purely internal use within the undertaking being disregarded.

The forms of use accepted

The legislation treats as use of the trade mark its use in a form differing in elements that do not alter its distinctive character, the affixing of the trade mark to goods intended solely for export, and use by a third party with the proprietor’s consent, in particular by a licensee. Use for only some of the registered goods protects those goods alone, the rest of the registration remaining exposed to partial revocation. The five year period runs from registration, and a proprietor who resumes or begins genuine use before any application for revocation escapes the sanction, unless that resumption occurs within the three months preceding the application and after the proprietor became aware that it was imminent.

Evidence and litigation

The burden of proof lies on the proprietor, who must establish the place, duration, extent and nature of use through dated documents: invoices, catalogues, advertisements, website captures, witness statements. The genuine use requirement comes into play at several stages. It underpins the revocation action, brought since 2020 before INPI as a principal claim. It allows an applicant facing an opposition to require proof of use of the earlier trade mark where it has been registered for more than five years. Finally, it gives the defendant to an infringement or invalidity action a defence based on the non-use of the trade mark relied upon.

Key points

A trade mark not used for five years becomes vulnerable, and protection shrinks to the goods actually sold. Use must be real, public and consistent with the function of the trade mark, in a form that does not alter its distinctive character. A file of dated evidence of use should be built from launch, product by product and country by country, and updated every year.

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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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