Genuine Use

21 June 2010

Bénédikte Hattier

According to Article L.714-5 of the French Intellectual Property Code : "An owner who has not put his mark to genuine use in connection with the goods or services referred to in the registration during an uninterrupted period of five years, without good reason, shall be liable to revocation of his rights".

This article provides that the following are examples of genuine use:

  • Use made with the consent of the owner of the mark or, in the case of collective marks, in compliance with the regulations;

  • Use of the mark in a modified form which does not alter its distinctive nature; and

  • Affixing of the mark on goods or their packaging exclusively for export.

Case law provides additional examples explaining the notion of genuine use, in the light of CJ case law.

Can charitable use be considered as genuine use?

Recently, French case law decided on charitable use following the CJ decision Radetsky (C-442/07) which ruled that that “a trade mark is put to genuine use where a non-profit-making association uses the trade mark, in its relations with the public, in announcements of forthcoming events, on business papers and on advertising material and where the association's members wear badges featuring that trade mark when collecting and distributing donations”.

Applying the Radetsky priniciples, on 10 April 2009, the Court of Appeal of Paris (Médecins sans Frontières v Autistes sans Frontières) decided that the genuine use of the trade mark “MEDECINS SANS FRONTIERES” in relation to humanitarian activities was evidenced by the distribution of advertising material (such as badges, leaflets…), requests for funds and sponsorships, invitations to conferences, invoices in relation with research activities financing…and so on.

Use of a trade mark in a slightly different form

On 13 September 2007 (Il Ponte Finanziarioa SpA C-234/06), the CJ decided that: “while it is possible, as a result of the provisions referred to in paragraphs 81 and 82 of the present judgment, to consider a registered trade mark as used where proof is provided of use of that mark in a slightly different form from that in which it was registered, it is not possible to extend, by means of proof of use, the protection enjoyed by a registered trade mark to another registered mark, the use of which has not been established, on the ground that the latter is merely a slight variation on the former.”

In France, this issue has given rise to many controversial decisions. Before the CJ gave its decision, the French Supreme Court (Cour de cassation) decided on the contrary that proof of the use of a slight variation of a trade mark could evidence the use of the former trade mark.

It seems that French Courts of Appeal now apply the solution given by the CJ (Court of Appeal of Paris 25 June 2008 ; Court of Appeal of Paris 13 June 2008) but the situation regarding this issue is still ambiguous since some Courts of First Instance (notably the Paris Court of First Instance) have resisted this solution. The answer will remain uncertain as long as the Cour de cassation has not decided this issue.

The Court of Appeal of Paris (10 April 2009) has referred however to the CJ decision that documents filed to evidence the genuine use of a trade mark can no longer be used to evidence the genuine use of another trade mark on the ground that it is merely a variation of the former.