FRANCE Trends and Developments Contributed by: Nathalie Dreyfus, Dreyfus & Associés
use by the public and the economic function of the product or service, rather than its formal classification. In practice, an overarching category such as “trans - port”, “cosmetics” or “software” may cover very dif - ferent realities. The court may therefore consider that such a category is divisible into autonomous sub-cat - egories and require segmented proof of use. This approach fundamentally changes the way a trade mark filing must be conceived. The European “Ferrari” case law striking a balance between protection and proportionality The Ferrari cases (C-720/18 and C-721/18) of 20 October 2020 clarified the CJEU’s reasoning on use in relation to specifications covering categories of vary - ing breadth. The logic is structured around a practical distinction. • Where a trade mark covers a precise and indivisi - ble category, use in relation to part of that category may be sufficient. • Conversely, where the category is broad and divisible, use must be proven for each identifiable autonomous sub-category. This distinction is particularly useful when building a filing strategy. It prompts a simple question: will the category claimed be perceived tomorrow as a “homo - geneous whole”, or as a set of distinct segments? In reality, many categories are divisible, because mar - kets themselves are divisible. This is precisely where the specification must be carefully calibrated to avoid offering illusory protection that is broad on paper but narrow in practice. French case law: the decisions of the French Supreme Court – Court of Cassation of 14 May 2025 In a first decision of 14 May 2024 (No 23-21.296), the French Court of Cassation provides a very concrete illustration of the requirement to segment goods and services into sub-categories, as already established by the Ferrari case law.
The trade marks at issue were registered for “trans - port” and “passenger transport” services. The propri - etor demonstrated genuine use for taxi services, and the Court of Appeal had considered this sufficient. The Court of Cassation adopted a more demanding approach. It criticised the lower court for failing to assess whether taxi services constituted an autono - mous and coherent sub-category within the broader category of transport services. It recalled that such an assessment must be objective and non-arbitrary, and must be based on the purpose and intended use of the services. The decision also emphasises that the Nice Classifi - cation is merely an administrative reference. It cannot, on its own, determine the legal analysis of the scope of the specification. As a result, evidence limited to taxi services does not necessarily suffice to maintain rights over the entire category of transport services. A second decision rendered on the same day (No 23-21.866) further confirms and refines this require - ment for a detailed analysis of genuine use in light of sub-categories. In that case, the trade mark was reg - istered for several broad categories of goods, includ - ing cosmetics and essential oils. In order to avoid revocation, the proprietor relied on use relating to specific products, such as textiles impregnated with active substances or composite products incorporat - ing essential oils. The Court of Appeal had accepted that such use was sufficient to establish exploitation of the trade mark for all of the categories claimed. The Court of Cassation overturned this reasoning, criti - cising the lower court for failing to examine whether those products genuinely corresponded to the goods as registered or whether they instead constituted autonomous sub-categories or distinct segments requiring specific proof of use. These decisions confirm that the French Supreme Court now requires a strict alignment between the evi - dence of use relied upon and the exact scope of the specification. For companies, the lesson is immediate.
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