FRANCE Trends and Developments Contributed by: Nathalie Dreyfus, Dreyfus & Associés
Trade Mark Filing Strategy in Light of Sub- Categories Class Case Law: Securing the Specification and Anticipating Proof of Use Why case law on sub-categories is changing the way trade marks are filed Filing a trade mark means obtaining an exclusive right. However, this exclusive right does not exist “in gen - eral” over a name or a logo: it exists only in relation to specific goods and services, as listed in the applica - tion for registration. In practice, the value of a trade mark therefore depends as much on the sign itself as on the specification accompanying it. For several years now, European and French case law has consistently reiterated a simple idea: a trade mark must not confer a purely “theoretical” monopoly over markets that its owner does not actually exploit. This requirement finds very concrete expression in the concept of autonomous sub-categories and in the strengthened control of genuine use. This evolution must be understood against a particular economic and litigation backdrop. Companies are fac - ing an increase in oppositions, invalidity actions and counterclaims for revocation, especially where older trade mark portfolios cover very broad specifications. Third parties, for their part, are using these mecha - nisms to reduce the scope of earlier trade marks and to secure their own signs. The specification of goods and services: the trade mark’s true “legal perimeter” A trade mark protects a sign, but only within the scope of the goods and services designated. This scope is defined by the specification, and it determines every - thing: the ability to act against a competitor, the pos - sibility of opposing a later application, and the trade mark’s resistance to attack. For a long time, a “broad filing” approach prevailed. Applicants sometimes opted for generic wording or simply reproduced class headings, with the aim of maximising protection without having to anticipate in detail how the trade mark would be used. In certain sectors, this approach was encouraged by concerns about the rapid evolution of offerings and distribution channels.
Today, however, this strategy entails increased risk. Where a trade mark is registered for a broad category but is only used for part of that category, it may be partially revoked. Protection then remains only for the segments actually used, which can drastically reduce the scope of enforcement. The legal framework: genuine use, revocation and the burden of proof French law provides for revocation where a trade mark has not been put to genuine use for five consecutive years, unless there is a proper reason. The reference provision is article L.714-5 of the French Intellectual Property Code, interpreted in line with the applicable European framework, in particular Article 18 of the 2017 EU Trade Mark Regulation (EUTMR). One point is essential for companies: the burden of proof lies with the trade mark owner. In other words, in the event of a challenge, it is not for the third party to demonstrate non-use, but for the proprietor to prove genuine, relevant and dated use. This rule is dictat - ed by procedural common sense: it would be rather hazardous to require the party seeking revocation to prove non-use, that is, to demonstrate the absence of a fact which, by definition, has left no trace. Furthermore, where the specification is broad and divisible, proof must be provided for the relevant sub-categories. This explains why certain portfolios, despite being intensively exploited, are nevertheless weakened. Use exists, but it does not always cor - respond to the legal segments identified through the sub-category analysis. Understanding autonomous sub-categories: a jurisprudential, not statutory, concept The concept of an autonomous sub-category does not stem from any express statutory definition in trade mark law, nor is it merely a technical subdivision of a class. It is a concept developed through case law, designed to reflect economic reality: within a “broad” category, certain goods or services may form distinct, identifiable and coherent groups. Case law focuses in particular on criteria relating to the purpose and intended use of the goods and ser - vices. In other words, what matters is the expected
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