FRANCE Trends and Developments Contributed by: Nathalie Dreyfus, Dreyfus & Associés
The court’s power to subdivide the specification: a frequently underestimated difficulty One of the key lessons from recent case law is that the court is not “bound” by the wording of the specifica - tion as drafted. Even if the applicant has not provided for any subdivision, the court may carry out an objec - tive division into autonomous sub-categories where this is justified by the purpose and intended use of the goods or services. This power has very tangible effects. A simple and overarching specification may, in litigation, be broken down into multiple segments. The proprietor then faces a heavier evidentiary burden than anticipated. In practice, this mechanism makes the filing strat - egy inseparable from the evidentiary strategy. Filing “broadly” is not merely a legal decision; it is also a documentary, internal and operational decision, because evidence will have to be preserved for each potential segment. For companies, this implies a cultural shift: proof of use is not an issue to be addressed at the last minute, but one that must be prepared from the time of filing. Filing a trade mark: the right level of precision to avoid “theoretical” protection An effective filing strategy is based on a careful bal - ance. If the specification is too broad, the trade mark may be vulnerable to revocation. If it is too narrow, the trade mark may be insufficient to support commercial development or to act against close competitors. The question is therefore not whether to file broadly or narrowly, but how to file intelligently, calibrating the specification so that it is both commercially useful and legally defensible in the long term. In this context, the notion of sub-categories requires reasoning in terms of real markets. It is necessary to identify the segments that the company exploits or seriously intends to exploit, and then translate those segments into a clear and defensible specification. It is often advisable to choose wording that describes a coherent set, rather than, for example, a category such as “entertainment” covering heterogeneous uni - verses. The objective is to reduce the risk that the
court will divide the category into numerous sub-cat - egories, some of which may be impossible to support with evidence. At the same time, a strategic margin should be pre - served. A well-thought-out filing allows reasonable variations of the offering to be covered without falling into speculative designations that would expose the trade mark. Anticipating proof of use: an operational component of trade mark strategy In practice, the most sensitive issue is proof of use. When a trade mark is challenged, the question is not merely to “prove that it is used”. It is necessary to prove that it is used for the goods and services cov - ered by the registration, and sometimes for autono - mous sub-categories identified in litigation. Effective proof of use must be dated, coherent and contextualised. It must demonstrate real use, not merely symbolic use, aimed at maintaining or devel - oping market outlets. It must also allow the commer - cial origin to be identified, thereby preserving the trade mark’s essential function. In complex cases, failure is not always due to lack of use. It is often due to the absence of suitable evi - dence, or to documentation that is too general to be linked to the relevant sub-category. What evidence should be gathered, and how should it be organised? Case law requires a methodical approach. For each plausible sub-category, it is recommended to gather specific and segmented evidence. The following ele - ments are often decisive: • invoices or order forms identifying the type of prod - uct or service, with dates and geographical areas; • catalogues, brochures, commercial leaflets or archived web pages showing the trade mark asso - ciated with the relevant segment; • targeted advertising campaigns, announcements or promotional materials, dated and linked to a specific product or service;
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