Can a semi-figurative trademark used without its logo constitute genuine use? Key lessons from the “Fuette / Fusette” case law

Introduction: a landmark dispute

In its decision of February 16, 2016, delivered by the Commercial Chamber of the Cour de cassation, the dispute opposed Le Fournil, the owner of the French semi-figurative trademark “ ” designating bread and bakery services and used as a trade name and shop sign, to the company Coup de Pâtes, which marketed a pre-baked bread product called “Fusette.” Claiming that this designation infringed its trademark rights, Le Fournil brought an action for trademark infringement.. In response, Coup de Pâtes sought the revocation of the trademark for lack of genuine use.

The Paris Tribunal de grande instance, upheld by the Paris Court of Appeal declared the revocation of the “La Fuette” trademark. However, the Cour de cassation overturned that decision, providing important clarifications regarding the requirement of genuine use of a trademark. The following article examines this ruling and outlines the practical lessons to be drawn for managing and protecting a trademark.

The legal framework: Article L. 714-5 of the French Intellectual Property Code and the notion of genuine use

Article L. 714-5 of the French Intellectual Property Code provides that the owner of a trademark may be subject to revocation if the trademark has not been put to genuine use for an uninterrupted period of five years, unless there are proper reasons.

Genuine use implies that the use is real, public, and in line with the essential function of the trademark: to guarantee the commercial origin of the goods or services. Evidence may be submitted by any means, provided that it reflects authentic and sufficiently significant commercial exploitation, rather than merely token use.

The system also includes a specific rule: use resumed within the three months preceding the filing of a revocation action can only be taken into account if it occurred before the owner became aware of the action or its imminence. This often-overlooked rule plays a decisive role in assessing whether genuine use has been proven.

All these elements show that the assessment of genuine use is highly contextual, depending both on the nature of the goods or services and on the concrete conditions under which the trademark is exploited. These are precisely the aspects on which the decision analysed here offers valuable guidance.

Detailed analysis of the February 16, 2016 ruling of the Cour de cassation

In its judgment of October 11, 2012, the Paris Tribunal de grande instance, followed by the Paris Court of Appeal in its decision of January 17, 2014,revoked the “La Fuette” trademark on the grounds that its use was not genuine: the trademark was neither affixed to the bread nor used with its figurative logo, and the evidence provided (receipts, bags, display panels) merely reflected the bakery’s activity rather than genuine trademark use.

The courts also held that using the verbal element alone altered the distinctiveness of the registered sign. Lastly, certain evidence of use was disregarded because they were dated after the three-month period prior to the revocation action, without verifying whether the trademark holder was aware of that action.

In its judgment of February 16, 2016 (No. 14-15.144), the Commercial Chamber of the Cour de cassation overturned and cancelled the decision of the Paris Court of Appeal.

The need for a complete and coherent body of evidence

The Cour de cassation criticised the lower courts for adopting an excessively restrictive approach to evidence of use.

Since the trademark could not physically be affixed to bread produced in a bakery, it was incumbent upon the Court of Appeal to take into account all relevant supports on which the trademark could also be used: bread bags, labels, advertising materials, the store sign, and invoices linked to the products sold, rather than relying solely on the absence of affixing on the product itself.

The Court reaffirmed that genuine use must be assessed globally, on the basis of a set of converging indicators, rather than a single isolated element.

Use of the verbal element alone: an acceptable modified form of use

Another key aspect of the ruling concerns the use of the term “La Fuette” without its figurative component “ .”

The Cour de cassation held that Court of Appeal should have determined whether the verbal element constituted the dominant and distinctive component of the semi-figurative trademark. If so, the use of the verbal element alone could be sufficient to demonstrate genuine use, provided that such use does not alter the distinctive character of the registered trademark.

This reasoning is consistent with established European case law, including the landmark Sabel judgment of 11 November 1997 (ECJ, C-251/95), which holds that a “global assessment must be based on the overall impression conveyed by the trademarks, taking into account their distinctive and dominant elements. The perception of the average consumer plays a decisive role, and the consumer normally perceives a trademark as a whole rather than analysing its individual details.”

Considering evidence within the critical three-month period

The ruling also recalls that resumed use within the three months prior to the revocation action can preserve the trademark, but only if the proprietor had not yet become aware of the impending action.

The Court of Appeal had rejected some evidence simply because it was dated after this period. The Cour de cassation held that this was legally incorrect: before excluding such evidence, the appellate judges should have verified whether Le Fournil was aware of the revocation action at the relevant time.

Practical implications for trademark owners

This decision highlights several essential points for effective portfolio management:

• Semi-figurative trademarks must be used on all supports adapted to the nature of the product, even where the product itself cannot bear the trademark.
• Evidence of use may consist of a wide variety of documents: receipts, display materials, commercial documentation, packaging, digital and traditional communications.
• Using only the verbal element may be sufficient where it is the dominant component of the trademark.
• Timing is critical: any threat of revocation must be anticipated so that a documented and timely resumption of use can be secured.

For more detailed guidance on assessing the genuine use of a trademark, please refer to our previously published article on the subject.

Strategic recommendations

In light of this case law, trademark owners should adopt a rigorous and proactive approach to documenting use. Systematic and dated retention of all materials demonstrating commercial exploitation (packaging, display items, advertising, digital content, invoices) remains essential.

From the moment the trademark is filed, identifying its dominant distinctive element helps guide how the trademark should be used and ensures consistency between the registered sign and its actual use.

If commercial exploitation becomes limited, a documented and timely resumption of use should be organised to avoid revocation. Evidence should always rely on a consistent and converging set of documents rather than a single isolated document.

Finally, when actual use differs from the registered sign, filing complementary variants may be an effective way to secure long-term protection.

Conclusion

The decision of February 16, 2016 adopts a pragmatic approach: genuine use must be assessed in light of commercial reality and the constraints inherent to the product. It also confirms that using only the verbal element of a semi-figurative trademark can amount to genuine use when that verbal element is the dominant component of the sign.

This decision is therefore a key reference for owners of semi-figurative trademarks, particularly where the nature of the product does not allow the sign to be affixed directly. It encourages trademark owners to document use rigorously, make systematic use of all available supports, and develop a proactive and structured evidentiary strategy.

Q&A

1. What is genuine use of a trademark?

It is the real and effective use of the trademark in the course of trade, enabling it to fulfil its essential function of identifying the commercial origin of goods or services.

2. Can a trademark be preserved if the owner proves that the lack of use is due to “proper reasons” under Article L. 714-5?

Yes. Article L. 714-5 explicitly provides that revocation cannot be ordered if non-use is justified by proper reasons. Case law interprets this narrowly: the obstacles must be beyond the owner’s control, directly linked to the trademark, and must objectively prevent its exploitation. Force majeure, administrative bans, pending litigation, or insurmountable regulatory barriers may be accepted; economic or strategic choices are not.

3. How can evidence of use be effectively secured?

The owner should systematically retain dated materials showing commercial use, regularly document actual exploitation, analyse the trademark’s structure to identify its dominant element, and, where necessary, file variants corresponding to the forms actually used.

4. Is use of a modernised version of a trademark (new design, updated typography) considered genuine use?

Yes, provided that the modernisation does not alter the distinctive character of the registered sign. Updated versions, such as changes in typography, simplified graphics, refined styling, are generally acceptable as long as the dominant element remains recognisable. A thorough redesign may, however, break the continuity of use.

5. Can digital use (website, social media) constitute evidence of use?

Yes. Digital materials showing visible and commercially meaningful use of the trademark can be accepted as part of a broader body of evidence demonstrating genuine use