Lapse of trademarks

 

April 1, 2022 marks the second anniversary of the entry into force of the new litigation procedures before the inpi under trademark law: invalidity actions, revocation actions, oppositions opened to new types of prior rights… This is the occasion to devote several articles to an assessment of the issues arising from the transfer of part of the french trademark litigation to the inpi.

 

In particular, in the context of revocation actions for lack of genuine use, with the implementation of a standardized and strictly regulated administrative procedure, france has put in place a simple and effective tool to obtain the removal from the register of old trademarks that are not or no longer seriously used.

A clear assessment method

Under french and eu law, “the owner of a trademark who, without good reason, has not made genuine use of it, for all the goods or services for which the trademark is registered, for an uninterrupted period of five years” may have his trademark revoked for lack of genuine use (art. L. 714-5 of the intellectual property code).

 

The institut national de la propriété intellectuelle (inpi) seems to have adopted a particularly structured method of analyzing proofs of use, which is directly reflected in the framework of its decisions and is inspired by the methodology implemented by the european union office for intellectual property (euipo) several years ago.

Like the french courts before it, the inpi assesses the seriousness of this use on the basis of the principles laid down by european case law[1] and its assessment appears to be broadly similar to that of the french courts and the EUIPO.

Criteria derived from european jurisprudence

Besides the relevant period (5 years preceding the filing of the application) and the place of use (in france), the inpi methodically examines the nature and extent of the use (2.1) and the application of this use to the goods and services covered by the contested mark (2.2).

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• The nature and importance of the use

On this point, the inpi verifies that the trademark is exploited as registered or, at the very least, in a modified form that does not alter its distinctive character, and differs from the requirements of certain french court[2] by adopting an approach that is rather favorable to trademark owners. [3]

 

Thus, in line with euipo case law, the institute confirmed that the deletion or addition of a descriptive term does not affect the identification function of the sign, even if these deletions/additions are combined with graphic variations from the registered mark.

 

On this basis, the inpi has, for example, validated the use of the signs, or to maintain the mark [4] or the use of the signs or to maintain the mark [5]. Inpi has even gone so far as to consider that modified forms constitute valid uses of the rungis trademark as long as the rungis pharma element (of which the rungis trademark is the dominant element) is separated from the other elements and, consequently, “can appear to the consumer as being the trademark of the range used simultaneously with the trademark of the connecting company ‘cloud santé‘”[6].

 

Of course, the inpi also reiterates that it is not necessary for the use of the trademark to be quantitatively significant to be qualified as serious. However, it remains that the evidence submitted must be assessed globally and provide sufficient indications concerning the commercial volume, territorial scope, duration, frequency and nature of the use[7] and that these elements must be assessed in light of the characteristics of the market for the goods and services concerned. Moreover, the more limited the commercial volume of the exploitation of the mark, the more it will be necessary to provide additional indications to dispel any doubt as to the seriousness of the use of the mark concerned. [8]

 

• Usage in relation to the products and services covered

The proof of genuine use must also relate to each of the goods and services covered by the application for revocation, which leads the inpi to very regularly pronounce the partial revocation of the contested trademark.

 

This leaves the question of the use of a trademark only in relation to a homogeneous sub-category of the goods or services covered. Specifically, will a trademark registered for clothing (broad category) but used only in relation to t-shirts (homogeneous sub-category) be maintained for clothing or only for t-shirts?

 

In such cases, the french courts have only rarely agreed to restrict the wording of the mark for which revocation was sought to the sole sub-category of goods and services exploited, preferring to maintain the broad wording, at least until recently. [9] on the contrary, the european authorities have long held that “proof of genuine use of the mark in respect of some of the goods and services concerned entails protection (…) Only in respect of the subcategory or subcategories of the goods and services for which the mark has actually been used” [10] in our example, the euipo would readily restrict the registration of the mark to t-shirts only, cancelling the mark in respect of all other subcategories of clothing.

 

The inpi seems a priori to take up this european jurisprudence and, in a rather severe decision, has already gone so far as to restrict the broad category of “perfumery products” to only “perfumery products used in devices or lamps intended for disinfection, sanitation and purification of the atmosphere as well as for the absorption of odors and smoke, in particular those of tobacco.“[11]

A formalism inspired by judicial proceeding

Insofar as a record of use contains exclusively elements provided by the trademark owner himself, the inpi has taken over, and thus imposes on the parties, the formalism of french judicial proceedings (as prescribed by article 56 of the code of civil procedure) and of administrative proceedings before the euipo (pursuant to article 55 of the delegated regulation on the european union trademark).

 

Thus, the decision of the director general of the inpi n° 2020-35 specifies in particular that the parties must number and list their documents in a schedule and relate these documents to their arguments. Failure to comply with this formalism may lead to the inadmissibility of the documents, or even to the revocation of the trademark (in the absence of admissible evidence). Thus, the inpi did not hesitate to declare the lapse of the gallup trademark despite a file of proofs of use of approximately 8,000 pages, discarding many of them in order to “ensure the proper administration of the procedure for both the parties and the institute.“[12]

 

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The stated objective of the new french revocation procedure is of course to “clean up the national trademark registry by strengthening the requirements for use of registered trademarks and facilitating the release of unused trademarks to allow other actors to use them.“[13]

 

This objective seems to have been fully achieved. Indeed, while the number of legal actions for revocation before the french courts remained relatively limited,[14] in only 2 years, the inpi has already been seized of nearly 340 requests for revocation for lack of exploitation. In particular, statistics made public by the inpi in february 2022[15] show that, among the 400 decisions rendered in the context of revocation and invalidity actions :

• Nearly 50% of the cases involved forfeiture actions,
• Lapse was rejected in only 1% of cases,
• The contested mark was partially revoked in 13% of cases and
• The contested mark was completely revoked in 34% of the cases (many of them without any proof of use).

 

This is a good opportunity to draw the attention of trademark owners who do not want to lose their rights and to encourage them to carefully and methodically keep the proof of use of their most strategic trademarks…