FRANCE Trends and Developments Contributed by: Nathalie Dreyfus, Dreyfus & Associés
• internal reports by business segment, where their content can be produced and relied upon in litiga - tion; and • relevant contracts, in particular licences, distribu - tion, maintenance, after-sales service, or evidence showing exploitation by an authorised third party. Each item of evidence should be preserved within a structured “file”: not as an undifferentiated mass of documents, but as an organised set by sub-category. This structure greatly facilitates the response in the event of an attack. This approach is all the more important because the court may subdivide the specification even if the applicant has not done so. Anticipating such subdivi - sion is a way of turning litigation risk into a strategic advantage. Use by subsidiaries, licensees or distributors: a useful but regulated lever In many corporate groups, trade mark use may be carried out by subsidiaries, distributors or licensees. Case law, including the General Court’s decision of 30 January 2025 (T-278/13), in line with Article 18 (2) EUTMR, generally accepts that use by an authorised third party may be taken into account, provided that such use takes place with the proprietor’s consent. This nevertheless requires contractual and documen - tary organisation. It must be possible to establish the existence of authorisation (licence, distribution agree - ment, group policy) and to demonstrate the reality of exploitation under the trade mark, provided that such exploitation continues to fulfil the trade mark’s essen - tial function of guaranteeing origin. For companies, the key point is straightforward: use may exist within the network, but it must be prov - able. A filing and evidentiary strategy must therefore integrate the circulation of documents between enti - ties, while respecting confidentiality and internal con - straints. Use in a slightly modified form: securing trade mark variants Companies rarely use a trade mark in a form iden - tical to the registered version, especially where the
sign is deployed across brand guidelines, campaigns and multiple media. European and French courts, in line with Article L.714-5 (3) of the French Intellectual Property Code and Article 18 EUTMR, accept use in a modified form provided that the modification does not alter the distinctive character of the sign. This does not mean that all variations are neutral. Substantial visual or conceptual changes may prevent recognition of use of the registered trade mark. The risk is then revocation, even if the market is familiar with the sign as used. As part of a filing strategy, it may therefore be advis - able to anticipate certain variants by filing the word trade mark alone or by securing the main versions actually used. The objective is to limit the gap between the trade mark “on paper” and the trade mark “on the market”. The issue of sub-categories is not limited to revoca - tion. It also affects disputes relating to likelihood of confusion, as the similarity of goods and services is assessed with increasing granularity. In some cases, a later applicant will seek to restrict the scope of protection of an earlier trade mark by chal - lenging its use for certain sub-categories. This strat - egy is common where a third party wishes to secure coexistence within a specific market segment. Conversely, a proprietor who has calibrated its filing and organised its evidence will enjoy a stronger defen - sive position. It will be able to demonstrate targeted but sufficient use and prevent its trade mark from being confined to an unduly narrow niche. For companies, the key takeaway is that filing strategy must now be read “in mirror” with litigation strategy. A well-filed trade mark is easier to defend, easier to enforce, and more dissuasive. Conclusion – filing today means preparing tomorrow’s defence Case law on autonomous sub-categories imposes a new discipline in trade mark filing strategy. Filing can Sub-categories and litigation: impact on opposition, invalidity and competition
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