News

Introduction

Consumer law is undergoing a major development with the introduction of a new mechanism: the “three-click” right of withdrawal for contracts concluded online within the European Union. Stemming from Directive (EU) 2023/2673, which amends Directive 2011/83 on consumer rights, this reform requires professionals to fundamentally rethink their digital interfaces, customer journeys and internal compliance processes.

This transformation forms part of the European Consumer Agenda 2030 and reinforces a well-established objective: ensuring a fair, transparent digital environment free from misleading practices or dark patterns.

A new digital right of withdrawal: the “three-click” mechanism

Strengthening the 14-day right of withdrawal

The right of withdrawal, enshrined in Directive 2011/83 and transposed in France under Articles L.221-18 et seq. of the Consumer Code, allows consumers to withdraw from a contract within 14 days without providing any justification.

The novelty does not lie in the duration of the withdrawal period itself, but in the way this right must now be exercised online.

Professionals must implement a clear, accessible and permanent electronic mechanism enabling consumers to withdraw from the contract through:

• A clearly identifiable button labelled “Withdraw from the contract here” or similarly unambiguous wording;
• An explicit confirmation via a second button labelled “Confirm withdrawal”;
• A confirmation sent to the consumer on a durable medium.

This feature must remain available throughout the entire withdrawal period.

A response to manipulative interfaces

This reform is part of the broader fight against manipulative interfaces. European authorities have identified that certain websites made cancellation complex, concealed or discouraging.

Making withdrawal difficult may now be classified as:

• A misleading commercial practice;
• An aggressive commercial practices;
• A dark pattern.

The principle is straightforward: the ease of subscribing must correspond to the ease of cancelling.

Technical obligations imposed on e-commerce operators

UX/UI and digital architecture adaptation

Operators must review their interfaces to:

• Ensure the withdrawal button is clearly visible and unambiguous;
• Maintain access to the mechanism throughout the withdrawal period;
• Allow easy identification of the contract concerned;
• Record each step of the process for evidentiary purposes.

Traceability and proof

Professionals must be able to demonstrate:

• The effective presence of the withdrawal button;
• The proper functioning of the withdrawal pathway;
• The sending of confirmation on a durable medium (e-mail, downloadable PDF).

A lack of traceability will significantly increase litigation risk.

Territorial scope and contracts concerned

A clearly extraterritorial reach

EU consumer law applies not only to businesses established within the EU but also to third-country operators targeting EU consumers.

Businesses will be deemed to target the EU market where they:

• Deliver to a Member State;
• Use a specific EU Member State language;
• Accept payment in euros;
• Conduct marketing campaigns directed at EU consumers.

Which contracts are concerned?

The reform applies to:

• Distance contracts;
• Financial services concluded at a distance;
• Digital subscriptions;
• Tangible goods sold online.

Traditional exceptions remain (immediately executed digital content with express consent, personalised goods, etc.).

Sanctions, risks and interaction with unfair commercial practices

Significant financial penalties

Each Member State determines applicable sanctions. In France, non-compliance may result in:

• A fine of up to €75,000 for legal entities;
• Additional administrative penalties;
• Enforcement action by the DGCCRF.

European authorities cooperate through the CPC (Consumer Protection Cooperation) network, reinforcing cross-border enforcement risks.

Heightened legal risk: extension of the withdrawal period

In the absence of a compliant mechanism:

• Consumers may exercise withdrawal by any means;
• The 14-day period may be extended;
• The company may be accused of obstructing consumer rights.

National authorities are already demonstrating increased vigilance in this regard.

Conclusion

European consumer law continues to pursue transparency and contractual balance in the digital environment. The three-click right of withdrawal represents a major regulatory development, combining enhanced consumer protection with increased accountability for economic operators.

This reform should not be viewed as a purely technical adjustment but as a central component of digital contractual governance and overall compliance (Digital Services Act, unfair commercial practices framework, GDPR).

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Does the withdrawal period remain 14 days?

Yes, except for specific exceptions applicable to certain services.

2. Can a consumer withdraw by other means than the designated button?

Yes. The three-click mechanism does not eliminate other lawful methods of exercising the right (e-mail, letter, model withdrawal form).

3. Does the right of withdrawal apply to immediately accessible digital content (streaming, downloads)?

It remains applicable unless the consumer has expressly waived the right before immediate performance and acknowledged the loss of that right.

4. Must the consumer provide justification?

No. Withdrawal remains without cause.

5. Does this mechanism apply only to financial services?

No. Although the amending directive concerns financial services, it modifies the general directive on consumer rights.

6. How can compliance be demonstrated during an inspection?

The professional must retain comprehensive documentation: time-stamped screenshots, technical logs, proof of confirmation sent on a durable medium, archived withdrawal requests and refund traceability.

This publication is intended to provide general guidance and highlight certain legal issues. It is not intended to apply to specific circumstances nor to constitute legal advice.

Introduction

Genuine use of a trademark constitutes a fundamental condition for maintaining balance within trademark law. In response to the proliferation of filings, defensive registration strategies, and overly broad specifications covering entire classes of goods and services, the legislature has enshrined the requirement of actual commercial exploitation of the sign. Protection is legitimate only insofar as the trademark effectively fulfills its essential function of indicating origin on the market.

This requirement of genuine use is not merely theoretical. In contentious proceedings, it operates as a substantive filter of the validity and enforceability of the monopoly right. A registered trademark that is insufficiently exploited becomes vulnerable to revocation.

The legal framework governing genuine use: requirements and assessment

The concept of genuine use is clarified under French law by in Article L. 714-5 of the French Intellectual Property Code, as amended pursuant to Directive (EU) 2015/2436, and forms part of the harmonized framework established by Regulation (EU) 2017/1001 on the European Union trademark .

Under this regime, a trademark owner incurs total or partial revocation where, without proper reasons, the trademark has not been genuinely used for a continuous period of five years in respect of the goods or services for which it has been registered. Revocation may be sought by any third party upon proof of absence of genuine use.

The concept of genuine use must not be equated with token or purely formal use intended solely to preserve the rights conferred by the trademark. According to settled case law of the Court of Justice of the European Union, genuine use consists in use that is consistent with the essential function of the trademark namely, to guarantee the identity of origin of the goods or services and that seeks to create or maintain market share for those goods or services (CJEU, Ansul, C-40/01). Such use must be public and external to the undertaking; purely internal or symbolic use is insufficient. However, genuine use may be effected by a third party with the consent of the proprietor.

Furthermore, the assessment of genuine use must be carried out globally, taking into account  the nature of the goods or services concerned, the characteristics of the relevant market, the territorial scope, and the frequency and intensity of the use (General Court, Sunrider Corp., T-203/02). In this respect, no minimum quantitative threshold of use may be required in the abstract (CJEU, La Mer Technology, C-259/02).

Moreover, genuine use must occur within the relevant territory covered by the protection conferred by the trademark. In the case of a French trademark, use must take place in France, it being accepted that use confined to a particular geographical area may suffice where it is economically justified. As regards an EU trademark, use must extend to a substantial part of the territory of the European Union; this requirement is assessed qualitatively rather than purely geographically, having regard in particular to the characteristics of the relevant market (CJEU, Leno Merken, C-149/11).

The burden of proof of genuine use

The assessment of genuine use of a trademark is subject to a concrete and contextual review carried out by the INPI or the EUIPO or the competent court, which determines, on the basis of a consistent body of converging evidence, whether the alleged use fulfills the essential function of the  trademark, namely to guarantee the identity of origin of the goods or services on the market.

Use must be established for the relevant reference period and within the legally pertinent territory that is, France in the case of a French national  trademark and, in the case of a European Union trademark, within the European Union, pursuant to a concrete appraisal taking into account the market concerned, without any automatic requirement of proof in  several Member States.

Genuine use must also be demonstrated in respect of the specific goods or services relied upon and in a form of the sign that corresponds to the registration or does not alter its distinctive character. The assessment is both qualitative and quantitative in nature: the economic consistency of the evidence, its expression, and its capacity to demonstrate an actual presence on the market prevail over its mere isolated volume.

The nature of admissible evidence

Proof of genuine use rests primarily on objective, external and economically verifiable evidence demonstrating that the  trademark has been effectively exploited on the market in relation to the goods or services concerned. The courts and the INPI as well as the EUIPO expect documentary evidence such as invoices, contracts, purchase orders or accounting records referring to the sign at issue, enabling the identification of the nature of the goods or services marketed, their volume, their frequency and their geographical destination. Catalogues, brochures, price lists, packaging, advertising materials or product photographs likewise carry probative value, provided that they are precisely dated and establish actual commercial circulation rather than merely preparatory acts.

Digital and marketing evidence now plays a decisive role, subject to proper contextualization: dated and archived screenshots of websites, sales data drawn from e-commerce platforms, media coverage or market studies, for example. Such evidence derives its probative force not from its abstract existence, but from its capacity to demonstrate an effective interface between the trademark and the relevant public, thereby evidencing concrete commercial activity on the relevant goods and services.

The scope of proof: preservative effect and delimitation of enforceable rights

In litigation, these principles assume a decisive procedural dimension. In revocation proceedings, the burden of proof lies with the trademark owner, who must demonstrate genuine use during the relevant period; failing such proof, revocation is ordered in respect of those goods or services not substantiated by the evidence produced by the adverse party. In opposition or  invalidity proceedings, where the earlier trademark has been registered for more than five years, proof of use is required upon request by the contested applicant/trademark holder and constitutes a condition for both the admissibility and the effectiveness of the pleas relied upon by the adverse party. The adjudicating authority does not confine itself to noting the formal existence of documents, but assesses their economic consistency, their concordance and their precise correspondence to the goods claimed.

The issue of autonomous sub-categories reinforces this requirement: where the specification is broad and divisible, proof must relate to each distinct segment, as sporadic use in respect of a single good or service is insufficient to maintain protection for the entirety of the abstractly claimed category. An overextended portfolio, not aligned with actual exploitation, mechanically increases the risk of partial revocation.

From this perspective, proof of use does not merely establish that exploitation has occurred; it determines the exact scope of the right maintained and legally enforceable. Its effect is strictly proportionate to the evidence adduced: protection subsists only for those goods or services for which genuine use is demonstrated, within the relevant period and territory, and in the registered form or an equivalent form. Proof of use thus produces a limited preservative effect, reducing the title to its economically justified perimeter and transforming the abstract wording of the registration into an effective monopoly. In practice, it redefines the scope of actions and pleas available in contentious proceedings.

Conclusion

Proof of genuine use constitutes a central issue in trademark litigation. The burden rests on the proprietor and must relate to a relevant period, territory and scope, supported by dated and verifiable documentation.

In a context where courts undertake a nuanced assessment particularly where autonomous sub-categories are at issue evidentiary management becomes a major strategic concern. Assembling a robust and structured evidentiary record is no longer optional, but a condition for the survival of trademark rights when faced with revocation actions or challenges in opposition proceedings.

While genuine use is not a condition for the initial validity of a trademark, it is a condition for the continued maintenance of the monopoly over time.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can late resumption of use prevent revocation?
Yes, but only if it occurs prior to the filing of the revocation action and is not artificially organized for the sole purpose of avoiding the proceedings.

2. Is use by a licensee valid?
Yes. Use by a licensee, with the consent of the proprietor, is legally deemed equivalent to use by the proprietor.

3. Is internal use (internal documents, prototypes) sufficient?
No. Use must be public and market-oriented. Purely internal or preparatory use is insufficient.

4. Can limited commercial activity amount to genuine use?
Yes, provided it is consistent with the size and structure of the relevant market. Assessment is always contextual.

5. Is proof of use examined ex officio?
No. It is examined only when expressly raised in the context of contentious proceedings.

6. Why must evidentiary management be anticipated?
Assembling an evidentiary record retrospectively is often complicated. Regular archiving of evidence of use is an essential measure to secure and preserve a trademark portfolio.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Filing an opposition against a European Union Trademark (EUTM) application without holding a registered prior right may appear intuitive where a sign has been used for several years. In practice, however, acting without an enforceable title is often a legally fragile and economically risky strategy.

In a context of increasing filings before the EUIPO and intensified competition among European market players, it is essential to assess the strength of one’s rights before taking action. A poorly grounded opposition may not only fail but also weaken a company’s strategic position.

The legal framework for opposing an EU trademark

Regulation (EU) 2017/1001 on the European Union Trademark (EUTMR) provides that an opposition must be based on a prior right valid within the European Union.

Such prior rights may include in particular:

• a national trademark registered in a Member State;
• an earlier European Union trademark;
• an international registration designating the EU;
• a well-known trademark within the meaning of the Paris Convention.

In the absence of such a right, an opposition is, in principle, bound to fail.

Contrary to common belief, mere commercial use of a sign in several Member States is not sufficient. The EU system is built upon the legal certainty attached to registration.

Earlier unregistered use: limited and strictly regulated protection

The exception under article 8(4) EUTMR: a narrow path

There is a limited exception. Article 8(4) EUTMR allows an opposition to be based on a non-registered sign used in the course of trade, provided that:

1. the right is recognised under the national law of a Member State;
2. that right entitles its holder to prohibit use of the later trademark;
3. the use predates the contested filing;
4. the sign is of more than mere local significance.

There is no EU-wide “unregistered European trademark.” The assessment must be conducted country by country.

A demanding evidentiary burden

In practice, the EUIPO requires substantial evidence, such as:

• dated invoices and contracts;
• detailed turnover figures;
• documented advertising campaigns;
• media coverage;
• proof of geographic market presence.

EU case law confirms that the burden of proof is heavy and the interpretation strict. For example, in a decision of July 9, 2010 (T-430/08), concerning the company name “Grain Millers GmbH & Co. KG,” invoked for flour products in Germany, it was argued that the company could not rely on its trade name.

The General Court of the European Union held, however, that under German law, pursuant to Article 5(2) of the Markengesetz, rights in a trade name arise from its first use in the course of trade, without the need for formal registration.

Procedural and strategic risks of opposing without prior rights

A high risk of rejection

A poorly founded opposition may result in:

• loss of official opposition fees;
• legal costs;
• a possible order to bear the other party’s costs;
• loss of strategic credibility.

Furthermore, a rejection decision may be used by the applicant to strengthen its commercial position.

A boomerang effect on trademark strategy

Acting without registered rights often reveals a structural weakness: lack of anticipation in protection strategy.

This may:

• encourage third parties to file similar signs;
• weaken the company’s position in negotiations;
• expose it to counterclaims.

In some cases, an unsuccessful opposition may even prompt the applicant to initiate infringement proceedings once registration is granted.

Alternatives and effective strategies to secure your position

1. Prompt filing of a national or EU trademark

If the contested application is still under examination, a coordinated strategy may be considered. However, a later filing does not allow action against an earlier application.

2. Subsequent invalidity action

Once the trademark is registered, an invalidity action may be appropriate, particularly if based on:

• a demonstrable prior right;
• the applicant’s bad faith (Article 59 EUTMR);
• infringement of a personality right or recognised trade name.

3. Strategic negotiation

In many cases, a transactional approach is more effective than a fragile opposition.

A well-reasoned cease-and-desist letter may assert the rights relied upon, outline the risks incurred, and open the door to an amicable solution: withdrawal of the application, limitation of goods and services, or a coexistence agreement.

This strategy often produces faster, more controlled and less costly results than formal EUIPO proceedings.

4. Preventive portfolio management

We systematically recommend:

• Conducting regular audits of signs in use;
• Filing defensive applications;
• Implementing EUIPO monitoring;
• Defining a coordinated multi-jurisdictional strategy.

Conclusion

Taking action against a European Union trademark application without a registered prior right is rarely a winning strategy.

Before filing any opposition, a thorough legal assessment is essential. Holding a solid prior right remains the cornerstone of any effective action.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the difference between an opposition and an invalidity action?
An opposition is filed during the examination phase of a trademark application and aims to prevent registration based on prior rights. An invalidity action is brought after registration and seeks retroactive cancellation of the trademark, based on relative grounds (prior rights, bad faith) or absolute grounds (lack of distinctiveness, public policy, etc.).

2. Is prior use of a trade name sufficient?
Only if the applicable national law allows the holder to prohibit use of a later trademark and if the sign is of more than mere local significance.

3. Can bad faith be invoked without holding a formal prior right?
Yes. Bad faith may be relied upon, particularly in invalidity proceedings, even without a registered trademark. However, evidence must demonstrate an intention to harm or unfairly appropriate the value of an existing sign.

4. Is there an EU-wide “unregistered European trademark”?
No. There is no unitary protection for an unregistered trademark across the European Union. Only certain national laws recognise non-registered signs under strict and territorially limited conditions.

5. Can a domain name used for several years constitute an enforceable prior right?
Yes, but only if it is recognised as a distinctive sign protected under applicable national law and if it entitles its holder to prohibit use of a later trademark. Mere use is insufficient; it must be substantial, prior and legally enforceable.

This publication is intended to provide general guidance and to highlight certain legal issues. It is not intended to apply to specific situations or to constitute legal advice.

Introduction

The launch of professional accounts on Instagram marked a decisive step in the evolution of corporate communication. Social media platforms are no longer merely channels for institutional expression; they are now fully integrated into business development strategies, customer relations, and the enhancement of intangible assets.

However, this evolution entails a specific and often underestimated legal risk : “username squatting”, namely the appropriation by a third party of a username corresponding to a trademark or distinctive sign. In a digital environment where control over identity determines credibility and visibility, securing identifiers has become a major strategic issue.

Instagram and professional accounts : a strategic asset at risk

The shift to professional accounts has significantly transformed the nature of Instagram profiles. Access to audience analytics, promotional tools and commercial features has turned the account into a genuine business asset.

In this context, the username is no longer a secondary choice. It concentrates trademark visibility on the platform and determines how easily consumers can identify and find the company. It also contributes to consistency across digital channels, including domain names and other social media platforms.

When a third party registers or exploits this identifier, the consequences go beyond mere technical inconvenience: public confusion, loss of traffic, trademark dilution and a weakening of the overall digital strategy may result.

Username squatting : definition, mechanisms and legal risks

Username squatting refers to the registration of a username identical or similar to a trademark, generally with speculative or harmful intent. This practice follows the logic of cybersquatting observed in domain names, now transposed to social networks.

Motivations may vary : resale at a high price, traffic diversion, exploitation of a trademark’s reputation, and more generally, of a company, or even identity impersonation intended to mislead consumers.

From a legal perspective, the risks are significant. Where a trademark is registered, the use of a username incorporating the protected sign may constitute trademark infringement if it amounts to use in the course of trade likely to create a likelihood of confusion. Case law acknowledges that a digital identifier may qualify as trademark use where it seeks to attract public attention in a commercial context.

In the absence of a sign being filed, action may be brought on the grounds of unfair competition or parasitism. In such cases, fault, damage and a causal link must be demonstrated, requiring a detailed analysis and solid evidentiary support.

Beyond litigation, damage to online reputation may occur rapidly and have lasting consequences, particularly where the disputed account disseminates misleading or harmful content.

Legal grounds for taking action against the misappropriation of a username

Trademark law constitutes the primary legal tool. Registration with the INPI, EUIPO, or through an international filing provides an exclusive right that may be enforced against unauthorized third-party use.

In parallel, Instagram, and more generally the Meta group, provides internal reporting procedures in cases of intellectual property infringement. These mechanisms require evidence of ownership and proof of the alleged infringement. The strength of the file and the rights holder’s responsiveness are decisive factors.

Where necessary, a formal cease-and-desist letter based on trademark infringement or unfair competition may have a strong deterrent effect. In certain cases, the intervention of specialized counsel is sufficient to secure voluntary transfer of the username.

Prevention : protecting your trademark before opening a professional account

Prevention remains the most effective strategy. Reserving usernames should be integrated into any trademark launch or development strategy, alongside trademark filing and domain name registration.

Implementing digital monitoring enables early detection of abusive registrations and allows prompt action. Such monitoring forms part of a broader policy for managing intangible assets and governing digital identity.

To learn more about the importance of monitoring your trademark on social media, we invite you to read our previously published article.

A global strategic approach : digital consistency and trademark protection

Username squatting should not be viewed in isolation. It forms part of a broader reflection on the consistency and security of a company’s digital presence.

Alignment between the registered trademark, domain names and social media identifiers strengthens commercial credibility and limits the risk of impersonation. Rigorous digital identity governance helps prevent fraud, reputational damage and traffic loss.

Today, digital identity constitutes a fully-fledged intangible asset. Its protection should be approached with the same level of rigor as other intellectual property rights.

Conclusion

The launch of professional accounts on Instagram offers considerable commercial opportunities and plays a key role in corporate visibility strategies.

However, the risk of username squatting requires increased vigilance. Effective protection relies on a combination of prior trademark registration, strategic reservation of identifiers and swift action in the event of infringement.

In a competitive digital environment, securing a username is not a minor operational detail; it is a major legal and strategic issue.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company reserve a username without immediately using the account ?
Yes. Preventive reservation of a username is recommended even if the account is not immediately active. It prevents third-party appropriation and secures future digital strategy.

2. Does the inactivity of a squatted account make transfer easier ?
Not automatically. Inactivity alone is insufficient; infringement of prior rights or violation of platform rules must be demonstrated.

3. Can a slightly different username still create legal issues ?
Yes, if the similarity creates a likelihood of confusion in the public’s mind. Assessment is case-specific and depends on the trademark’s reputation and the context of use.

4. Is a username considered a company asset ?
Indirectly yes. As part of digital identity, it contributes to trademark recognition and coherence, potentially impacting the overall valuation of intangible assets.

5. Is social media monitoring truly necessary for SMEs ?
Yes. The risk of impersonation does not only affect large corporations. Appropriate monitoring enables early detection of infringements and limits their impact.

This publication is intended to provide general guidance and highlight certain issues. It is not intended to apply to specific situations nor to constitute legal advice.

Introduction

In its Deity Shoes case of December 18, 2025, the Court of Justice of the European Union (CJEU) clarified with remarkable precision the conditions for protection of community designs.

Through this decision, the Court reaffirmed two fundamental principles: first, that protection under Regulation (EC) No 6/2002 is subject solely to novelty and individual character. Second, that the existence of fashion trends cannot lower the threshold required to establish individual character.

In recent years, fast fashion has profoundly transformed the fashion industry. Within weeks sometimes days a trend spotted on a runway or social media platform is reproduced on a large scale. The phenomenon of “dupes” products openly marketed as near-identical alternatives at lower prices further intensifies this pressure. We invite you to read our article previously published on this issue.

This judgment arises in a context marked by increasing litigation related to fashion, product customization and rapid reproduction practices. It now stands as a key reference for design right holders throughout the European Union.

The background of the case: A revealing illustration of contemporary creative practices

Deity Shoes marketed footwear protected by community design registrations. Its creative process relied on selecting and combining components sourced from catalogues of Asian suppliers. Colors, materials, decorative elements and accessories were chosen from pre-defined options and assembled into a final product intended for the European market.

When sued for counterfeiting, the defendant companies challenged the validity of the asserted rights. In their view, the designs merely resulted from the juxtaposition of pre-existing elements, without genuine creative contribution, and therefore could not meet the statutory requirements.

The CJEU was asked to clarify two sensitive issues:

• Whether a minimum threshold of creativity exists under EU design law;
• Whether fashion trends affect the assessment of individual character.

Fundamental reminder: no “minimum degree of creativity” required for design protection

One of the central questions referred to the Court concerned the possible existence of a minimum creativity threshold. The defendants argued that the contested designs reflected nothing more than combinations of existing elements and did not demonstrate any particular intellectual effort.

The Court rejected this reasoning unequivocally. Protection under Regulation No 6/2002 cannot be made conditional upon a “minimum degree of creativity” or a “particular intellectual effort.”

The Court clearly distinguished design law from copyright law. While copyright protects original “works” reflecting the author’s personality, design law protects new and individualized objects, often of an utilitarian nature and intended for mass production.

Accordingly, the assessment does not focus on the intensity of the creative process but on the final product. Novelty and individual character must be evaluated through an objective comparison with prior designs. The concept of “designer,” referred to in Article 14 of the Regulation, is relevant only for determining ownership and does not introduce any additional substantive condition for protection.

Design law: is the customization of a pre-existing design sufficient to establish individual character?The Court further clarified that “the fact that a design results from the personalization of a basic model […] is not, in itself, an obstacle to recognizing its individual character.”

The decisive factor remains the overall impression produced on the informed user. Even when composed of known elements, a design may be protectable if the specific combination creates an overall impression that differs from that produced by any individual prior design.

This clarification is crucial for the fashion industry, where creativity often operates through selection, adaptation and recombination rather than radical invention.

The informed user and the requirement of a global comparison

The Court adopted a rigorous approach to the assessment of individual character. The analysis must be conducted from the perspective of the informed user, defined as a person possessing a high degree of attention and extensive knowledge of the sector concerned.

This informed user is familiar with prevailing fashion trends. However, such knowledge does not reduce the level of scrutiny. On the contrary, it makes the user more attentive to differences in detail.

The Court emphasized that the assessment must be based on a global comparison, independent of aesthetic considerations, commercial positioning or the popularity of certain elements. The reasoning cannot rely on the notoriety of a trend or market saturation.

Practical implications of the case for fashion stakeholders

The judgment comes at a time of modernization of EU design law. The ongoing reform seeks to adapt the system to digital environments, clarify key concepts and enhance legal certainty.

In this context, the Deity Shoes ruling consolidates the theoretical foundations of the regime. It reassures right holders by confirming that protection is not dependent on fluctuating subjective criteria. At the same time, it prevents an excessive dilution of the individual character requirement in a sector heavily influenced by trends.

For businesses, this case law calls for a structured filing strategy. It is essential to:

• Clearly define the scope of claimed protection;
• Identify the visually dominant features of the design;
• Anticipate potential comparisons with prior art.

A proactive and strategic approach significantly enhances enforceability against fast fashion operators.

Conclusion

Design rights constitute an effective legal weapon against fast fashion, provided they are deployed within a coherent strategy. The Deity Shoes ruling clarifies that protection does not depend on subjective creative effort or the existence of fashion trends, but rather on the overall perception of the product by the informed user.

This strengthens business models based on adaptation and combination while maintaining a high and objective threshold for individual character. For fashion creators who invest in structured intellectual property protection, the legal framework offers robust and predictable safeguards.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of their intellectual assets.

Dreyfus & Associés works in partnership with a global network of Intellectual Property attorneys.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Can fast fashion reduce the effectiveness of design protection?

Fast fashion does not alter the legal validity criteria. However, rapid production cycles and widespread copying may complicate enforcement. Effectiveness therefore largely depends on the filing, monitoring and enforcement strategy implemented by the right holder.

2. Can a design inspired by a supplier’s catalogue be protected?

Yes. The CJEU confirmed that a design resulting from the personalization or combination of pre-existing elements may be protected, provided that the chosen combination produces a distinct overall impression. The originality of each component taken individually is irrelevant.

3. Does commercial success influence the assessment of individual character?

No. The analysis is strictly legal and objective. Market popularity, aesthetic appeal or branding strategy do not affect validity. Only the overall impression on the informed user is decisive.

4. How long does protection of a community design last?

A registered community design is protected for an initial period of five years, renewable in five-year increments up to a maximum of 25 years. An unregistered community design benefits from three years of protection from the date of disclosure within the European Union.

5. Is it necessary to demonstrate significant creative effort to obtain protection?

No. Unlike copyright law, EU design law does not require a minimum degree of creativity or particular intellectual effort. Novelty and individual character are the only substantive requirements.

Introduction

Trademark invalidity in France and in the European Union has become a major strategic tool for securing a portfolio of rights, defending a competitive position, or neutralizing an opportunistic filing. Since the reform introduced by the Ordinance of  November 13, 2019 and the transfer of jurisdiction to the French National Institute of Industrial Property (INPI) for a large portion of intellectual property administrative disputes, invalidity actions have become more structured, professionalized, and significantly faster.

When can an invalidity action be brought ? On what legal grounds ? What procedure should be followed before the INPI or the EUIPO ? And above all, how can the chances of obtaining cancellation of a registered trademark be maximized ?

We provide here a structured, practical analysis grounded in experience.

What is trademark invalidity under French and EU law ?

Trademark invalidity consists of establishing that a sign registered as a trademark should never have benefited from the protection granted under trademark law. It is not a matter of sanctioning conduct occurring after registration, but rather of identifying a legal defect that existed at the filing date. In other words, invalidity is based on the principle that the trademark was irregular ab initio.

Since the reform that entered into force in 2020, the INPI has jurisdiction over  administrative invalidity actions. This development has profoundly transformed practice by making proceedings more accessible and considerably faster.

At EU level, Regulation (EU) 2017/1001 governs invalidity proceedings before the EUIPO. Although principles are harmonized, the analysis remains demanding, particularly with regard to evidence and the assessment of likelihood of confusion.

The effect of an invalidity decision is particularly powerful : the trademark is deemed never to have existed. This retroactive effect may weaken license agreements, coexistence agreements, or infringement actions based on the cancelled title. In strategic litigation, invalidity can therefore neutralize a competitor’s legal weapon.

Absolute and relative grounds for trademark invalidity

The distinction between absolute and relative grounds structures the entire invalidity framework. The former protect the public interest; the latter safeguard earlier private rights.

• Absolute grounds for invalidity :

A trademark is liable to invalidity if, at the time of filing, it did not meet the essential validity requirements. This is the case where it lacks distinctive character, merely describes the goods or services concerned, has become customary in everyday language, or is misleading as to the nature, quality, or origin of the goods.

Contrary to public policy or morality may also constitute an independent ground, although its application remains rare and strictly interpreted.

Bad faith of the applicant has become central in contemporary case law. French and European courts carefully scrutinize massive, defensive, or speculative filing strategies. A filing made solely to prevent a competitor from accessing the market, without any genuine intention to use the sign, may constitute abusive conduct justifying cancellation.

In technological sectors, we frequently observe filings anticipating emerging trends, such as artificial intelligence, blockchain, or the metaverse, made by entities with no actual development project. In such situations, the chronology of events, the relationship between the parties, and the competitive context become decisive.

• Relative grounds for invalidity :

Invalidity may also be based on the existence of an earlier right. This may include a French trademark, an EU trademark, or an international trademark designating the relevant territory. Other rights may also be invoked, such as a prior company name, trade name, domain name effectively used in the course of trade, copyright, or personality rights.

The analysis is based on the concept of likelihood of confusion, assessed globally. Authorities examine the visual, phonetic, and conceptual similarity of the signs, the proximity of the goods or services, and the distinctiveness of the earlier right. This assessment is contextualized: the relevant public, the level of consumer attention, and the possible reputation of the earlier right all play a determining role.

Practice shows that mere chronological priority is insufficient. It is also necessary to demonstrate effective use and real economic impact. Evidentiary strategy therefore lies at the heart of a successful action.

Invalidity proceedings before the INPI and the EUIPO

Since the reform, proceedings before the INPI have become a particularly effective tool. The procedure is fully digital and based on a strictly regulated timetable. Exchanges are written and adversarial. Each party must present all arguments and evidence within the prescribed deadlines, failing which submissions may be declared inadmissible.

A decision is generally issued within six to ten months, which represents a significant gain in time compared to traditional judicial proceedings. This speed allows invalidity actions to be integrated into broader commercial strategies, including fundraising operations or portfolio restructuring.

Certain complex situations, particularly where invalidity is based on copyright or contractual issues, remain within the jurisdiction of judicial courts.

For further information on the invalidity procedure before the INPI, we invite you to refer to our  article, previously published on this subject.

Before the EUIPO, proceedings follow a similar logic within a harmonized European framework. The application must be precisely reasoned and accompanied by all relevant evidence. The trademark holder has the right to respond, and the decision may be appealed before the Boards of Appeal.

The evidentiary requirement is particularly high. Applications that are insufficiently substantiated are systematically rejected. Drafting rigor and strategic coherence are therefore essential.

What evidence is required to obtain trademark invalidity ?

The success of an invalidity action largely depends on the quality of the evidence produced. For absolute grounds, it may be necessary to demonstrate the descriptive nature of a term through linguistic analyses, specialized dictionary extracts, sector publications, or examples of common market usage.

In cases involving bad faith, email exchanges, the chronology of business relationships, competing initiatives, or a manifest absence of intent to use may constitute decisive indicators.

Where invalidity is based on an earlier right, registration certificates alone are not always sufficient. If the earlier trademark is more than five years old, its holder must demonstrate genuine use. Invoices, catalogs, advertising campaigns, dated screenshots, and sector-specific turnover figures then become essential.

Recent case law strictly regulates the late submission of evidence. Methodical anticipation is therefore indispensable from the outset of the action.

Invalidity, opposition or revocation : which strategy should be chosen ?

The choice between opposition, invalidity and revocation is not merely a procedural preference ; it forms part of a broader strategic approach that takes into account timing, legal risk exposure and underlying business objectives.

Opposition is the preventive tool by excellence. It allows action to be taken upstream, before the contested trademark is registered. In France, opposition must be filed within two months from the publication of the application in the official bulletin (BOPI). At European Union level, the time limit is three months from the publication of the European Union trademark application by the EUIPO. The decisive advantage of opposition lies in its ability to block registration and prevent the trademark from producing legal effects. However, it requires active monitoring of trademark filings and immediate responsiveness.

Invalidity, by contrast, operates after registration. It enables a party to challenge retroactively a right that has already been entered on the register. Invalidity becomes a central strategic instrument when the opposition deadline has expired or when the dispute arises within broader litigation, particularly as a defense in infringement proceedings. In such cases, invalidity can neutralize the very foundation of the opposing party’s claim by eliminating the invoked trademark altogether.

Revocation follows a different logic. It sanctions the absence of genuine use of a trademark over an uninterrupted five-year period, or circumstances where the mark has become misleading or generic. Revocation is rooted in post-registration conduct and relies on a factual assessment of the effective commercial exploitation of the sign. In complex matters, revocation may be strategically combined with an invalidity action, allowing the claimant to articulate multiple lines of attack, one based on the initial irregularity of the filing, the other on the lack of subsequent use.

Ultimately, opposition protects proactively, invalidity corrects retroactively, and revocation penalizes inactivity. The appropriate choice depends less on the nature of the right itself than on procedural positioning and the competitive strategy pursued.

Conclusion

Trademark invalidity in France and in the European Union is a powerful strategic instrument for the protection of intangible assets. Early analysis and rigorous structuring of the case significantly increase the likelihood of success.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

FAQ

1. Can a trademark be invalidated for lack of genuine intention to use at the time of filing ?

Yes. If the filing was made without a serious intention to use the mark, in a blocking or speculative strategy, this may constitute bad faith and justify cancellation, provided consistent and objective evidence is produced.

2. Can a prior domain name be relied upon to obtain trademark invalidity ?

Yes, provided that effective prior use of the domain name in the course of trade and a likelihood of confusion are demonstrated. Mere registration is insufficient; commercial exploitation is decisive.

3. Can a weakly distinctive trademark be invalidated several years after registration ?

Yes, if the lack of distinctiveness existed from the outset and has not been remedied by intensive use conferring acquired distinctiveness. The burden of proving such acquired distinctiveness lies with the trademark holder.

4. Can an invalidity action be brought defensively in infringement proceedings ?

Absolutely. Invalidity is frequently used as a strategic defense. If the invoked trademark is cancelled, the infringement action becomes legally unfounded.

5. Does peaceful coexistence between two trademarks prevent an invalidity action ?

Not necessarily. However, conscious and prolonged tolerance of more than five years may, in certain circumstances, deprive the earlier right holder of the ability to act, except in cases of bad faith.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

With the rapid development of generative AI systems capable of simulating voices and faces with striking realism, the legal protection of digital identity remains fragile. In this context, American actor Matthew McConaughey recently filed several trademark applications with the United States Patent and Trademark Office (USPTO), including movement trademarks depicting him.

Such an initiative has surprised many legal practitioners, as it challenges the traditional boundaries of trademark law and raises novel questions regarding the legal protection of digital identity.

The limits of personality rights in the face of generative AI

Under French law, a person’s image and voice are protected as personality rights, primarily pursuant to Article 9 of the French Civil Code related to the right to privacy. This provision protects any unauthorized use of elements enabling the identification of a person, irrespective of whether a pre-existing material medium exists. An infringement may therefore be established whenever the public is capable of recognizing the individual concerned.

Although protective, this regime relies on demanding evidentiary requirements. The claimant must demonstrate the existence of an infringement, fault, identification of the responsible party, and, where applicable, the extent of the damage suffered.

The emergence of generative AI complicates each of these elements. AI systems may produce “resembling” voices or faces without directly reproducing an identifiable recording or photograph. The legal issue lies less in the distinction between reproduction and simulation than in the assessment of identifiability: at what level of resemblance can a person be deemed legally recognizable?

Further uncertainty arises from issues of attribution. The generation of AI content may involve multiple actors, developers, infrastructure providers, end users, and distribution platforms, thereby rendering the allocation of liability more complex. Existing mechanisms remain primarily corrective and intervene only after the dissemination of the contested content.

The evolution of filing requirements for distinctive signs

Since the entry into force of French Ordinance No. 2019-1169 of November 13, 2019 implementing the EU Trademark Package (Directive (EU) 2015/2436), French trademark law has undergone significant modernization.

The abolition of the requirement of graphic representation replaced by the obligation to represent the sign in a manner that is clear, precise, self-contained, easily accessible, intelligible, durable and objective in the register, has considerably broadened the range of registrable signs. This reform follows the criteria established by the Court of Justice of the European Union in the Sieckmann judgment (CJEU, December 12, 2002, Case C-273/00), which are now fully integrated into the practice of trademark offices.

Within this updated framework, French and EU law expressly permit the registration of sound trademarks, movement trademarks and multimedia trademarks, provided that they are represented in an appropriate technological format, such as an audio file (MP3) or video file (MP4). A sound trademark may therefore consist of a precisely fixed sequence, such as a jingle, a distinctive intonation or a recurring expression used in a commercial context, provided that the relevant public perceives it as an indication of commercial origin.

The protection of voice and image through trademark law under French and EU Law

Pursuant to Article L.711-2 of the French Intellectual Property Code, a sign may be registered only if it is linked to designated goods or services and used as a trademark to distinguish the goods or services of one undertaking from those of others. When applied to a sound or audiovisual sequence, this principle requires that the relevant public perceive the sequence as an indication of commercial origin.

It is essential to emphasize the precise scope of the monopoly conferred. Protection extends exclusively to the sign as filed and exploited, namely, the specific sound or audiovisual sequence recorded in the register. Trademark law does not grant a general appropriation of a person’s identity; rather, it secures a defined expression integrated into commercial activity.

The primary advantage of relying on trademark law lies in its litigation framework. The proprietor of a registered trademark holds a constitutive right benefiting from a presumption of validity and may initiate counterfeiting proceedings where a third party reproduces or imitates the sign in the course of trade for identical or similar goods or services.

Such action is based on the infringement of the registered sign itself, independently of the need to demonstrate personal moral damage, and allows for effective injunctive relief, including through internal procedures implemented by digital platforms.

Nonetheless, a measured approach remains necessary. Registering a sound or audiovisual excerpt as a trademark is legally demanding. Trademark law is not intended to protect an individual’s personality but to identify the commercial origin of goods or services.

Attempting to secure a voice or image through trademark law may therefore conflict with its economic rationale. It must be demonstrated that the sign genuinely fulfills the essential function of a trademark and is not merely perceived as a representation of the individual. Failing genuine use within the meaning of trademark law, the registration risks being challenged or revoked for non-use.

Conclusion

Trademark law protects only a specific sign exploited as an indication of origin in the course of trade. Its effectiveness will therefore depend, in practice, on the proprietor’s ability to demonstrate genuine, distinctive use as a trademark.

In the context of generative AI, trademark law does not constitute a universal solution. Nevertheless, it offers a more structured legal framework than personality rights alone, allowing certain uses to be anticipated and supported by an enforceable registered title. Such a strategy must, however, be embedded in a coherent and sustained commercial exploitation.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1.Does trademark law protect against non-commercial deepfakes?
No. Trademark law requires use in the course of trade. Deepfakes disseminated for parody or private purposes are more likely to fall under image rights or other legal mechanisms.

2.Does celebrity status provide an advantage when registering a voice excerpt?
Not automatically. While notoriety may facilitate the acquisition of distinctiveness through use, it does not exempt the applicant from satisfying the statutory conditions.

3.Does parody limit trademark protection?
In certain circumstances, freedom of expression may be invoked, particularly where the use does not undermine the essential function of the trademark.

4.Does a multimedia trademark offer broader protection?
It may provide more precise protection where the combination of sound and image constitutes the core element of commercial identification.

5.Why does registering a trademark simplify judicial proceedings in cases involving voice or image misuse?
Because infringement proceedings are based on the existence of a registered and presumed valid right, shifting the debate from the subjective assessment of personal harm to the more objective issue of infringement of a protected sign. This may render the evidentiary analysis clearer and more structured before court.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

Commercial identity encompasses all signs through which the public identifies a company, such as its corporate name, trade name, business sign, visual identity, or digital presence. The protection of these elements is governed by distinct legal regimes that are often less structured and less predictable than trademark law.

In a context where a company’s name and image circulate across borders instantaneously, securing distinctive signs has become a non-negotiable requirement. Trademark registration does not encompass the entirety of a company’s commercial identity; however, it constitutes its most solid legal foundation. It grants an exclusive right over a specific sign (name, logo, slogan) in relation to precisely designated goods and services. In the absence of registration, a third party may file and appropriate an identical sign. Conversely, a registered trademark enables its owner to initiate opposition proceedings, bring counterfeiting actions, and consolidate a legally controlled intangible asset.

Why is trademark filing essential to preserve its legal identity?

Under French law, a trademark constitutes an industrial property title governed by Articles L.711-1 et seq. of the French Intellectual Property Code. Registration confers upon its holder an exclusive right of use for the designated goods and services, subject to the principles of specialty and territoriality.

This exclusive right produces immediate and structured legal effects. In particular, it allows the holder to:

• Prohibit the use of an identical or similar sign for identical or similar goods or services;
• Take action against the use of a similar sign creating a likelihood of confusion;
• File opposition against a subsequent trademark application within statutory deadlines;
• Initiate infringement proceedings before specialized courts;
• Challenge domain name registrations reproducing or imitating the trademark;
• Exploit the sign through licensing, franchising, or assignment.

A registered trademark therefore constitutes a right enforceable erga omnes. By contrast, in the absence of registration, protection relies on unfair competition or parasitism claims under Article 1240 of the French Civil Code. Such actions require proof of fault, damage, and causation, an evidentiary burden considerably more uncertain than in trademark infringement proceedings. Registration thus transforms commercial use into a legally consolidated property right.

This protection nevertheless requires consistency between the registered sign and the actual business activity. The selection of classes under the Nice Classification and the drafting of specifications must correspond to a genuine, documented, and coherent business project. Recent case law confirms that trademark filing may not be diverted from its economic purpose. The decision of the French Intellectual Property Office (INPI) dated September 13, 2024 (NL 23-0183) concerning bad faith filing confirms that a speculative filing intended solely to block a third party, without genuine intent to use, is liable to cancellation.

A detailed analysis of this decision is available here:

https://www.dreyfus.fr/en/2025/02/10/french-trademark-office-inpi-decision-of-september-13-2024-bad-faith-trademark-filing-and-its-implications/

How to integrate trademark filing into a comprehensive protection strategy?

Trademark registration is not an end in itself. To achieve full effectiveness, it must form part of a coordinated strategy encompassing all means of identification and exploitation of the sign.

Consistency between trademarks and domain names is essential. Filing a trademark without securing the corresponding strategic domain names (.fr, .com, or relevant country-code extensions) exposes the company to opportunistic registrations capable of generating confusion, traffic diversion, or fraud. An effective protection strategy therefore requires proactive domain name registration and ongoing monitoring of competing filings.

This protection must also be aligned with digital compliance. The exploitation of a trademark on a website or digital platform requires compliance with legal obligations relating to mandatory disclosures, personal data protection, and commercial communication rules. Deficiencies in this area may weaken the reputation attached to the sign and compromise its economic value.

A trademark is a territorial right whose scope depends on the chosen title. A filing with the INPI provides protection limited to France. A filing with the European Union Intellectual Property Office (EUIPO) produces unitary effect throughout the European Union. The Madrid International Registration System enables protection to be extended to specifically designated States.

The choice of territorial scope must not be dictated solely by the company’s present situation; it should reflect its foreseeable business development. A trademark protected only in France will not prevent identical use in Germany or Spain. Conversely, a European Union trademark may be vulnerable if an earlier right exists in a single Member State. Legal security therefore requires a forward-looking assessment of target markets, competitive risk areas, and planned expansion.

We invite you to read a previously published article outlining best practices in trademark filing and portfolio management strategy:

https://www.dreyfus.fr/en/2026/02/11/how-to-build-in-2026-a-trademark-filing-and-management-strategy-to-secure-structure-and-anticipate-risks/

Finally, a registered trademark must be viewed as a structured intangible asset. It may be licensed, assigned, contributed in kind, or valued in the context of financing or restructuring operations. Integrating trademark filing into a comprehensive strategy therefore means securing not only a distinctive sign but also a central component of the company’s intangible assets, controlled geographically and economically exploitable.

Conclusion

Ultimately, trademark filing constitutes the foundational act in securing your commercial identity from a legal standpoint. When properly prepared, it transforms a mere distinctive sign into an exclusive right that is enforceable, exploitable, and economically valuable. Poorly anticipated, it exposes the business to opposition proceedings, invalidity actions, or loss of rights. Effective trademark protection therefore requires a methodical, forward-looking, and economically coherent approach. Securing your trademark today means strengthening the long-term legal and financial value of your business.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can a trademark be filed before the company is incorporated?
Yes. An individual may file a trademark prior to company incorporation. The trademark must subsequently be assigned or contributed to the company to avoid any uncertainty regarding ownership.

2. Should the name or the logo be filed first?
A word trademark generally provides broader protection, independently of graphic stylization. A figurative trademark protects a specific visual representation. Both filings may be complementary depending on the protection strategy.

3. Does a trademark automatically protect the corresponding domain name?
No. A trademark grants a right to prohibit use, but it does not automatically reserve the corresponding domain name, which must be registered separately.

4. Can a trademark be modified after registration?
No. A registered trademark cannot be substantially modified. Any material alteration requires a new filing.

5. Can a trademark be cancelled several years after registration?
Yes. An invalidity action may be brought at any time if an absolute or relative ground for refusal existed at the time of filing.

The purpose of this publication is to provide general guidance to the public and to highlight certain issues. It is not intended to apply to particular situations or to constitute legal advice.

Introduction

When an applicant receives a notice of opposition against a recently filed trademark, the stakes go far beyond a mere procedural formality. The issue concerns the protection of the company’s commercial identity, strategic positioning, and the economic value of its intangible assets. In trademark law, opposition is a specific administrative procedure allowing a third party to request the refusal of a trademark application on the grounds that it allegedly infringes earlier rights.

In this article, we will examine how an applicant can build a structured, persuasive response that complies with procedural requirements, both before the French National Institute of Industrial Property (INPI) and the European Union Intellectual Property Office (EUIPO).

The legal framework of opposition in France and the European Union

Under French law, opposition is governed by Articles L.712-4 et seq. of the French Intellectual Property Code (IPC). It allows the holder of an earlier right to oppose the registration of a new trademark. The time limit for filing an opposition is two months from the publication of the trademark in the Official Bulletin of Industrial Property (BOPI).

At the European level, opposition is regulated by Articles 46 and seq. of Regulation (EU) 2017/1001 on the European Union trade mark. The deadline to file opposition is three months from publication of the EU trademark application.

These time limits are non-extendable and determine the admissibility of the opposition. Any action filed out of time is automatically declared inadmissible.

Opposition is primarily based on the existence of a likelihood of confusion, a key concept defined in Article L.713-3 of the French IPC and Article 8(1)(b) of Regulation (EU) 2017/1001. This mechanism does not seek to sanction infringement but to prevent the registration of a sign that could mislead the public or dilute earlier rights.

Notification of the opposition: the starting point of the defense strategy

From the date of publication in the BOPI, any person who believes that the trademark infringes on their prior rights (already registered trademark, trade name, company name, etc.) has two months to file an opposition. This period cannot be extended. If no opposition is filed within this time frame, the trademark will continue through the registration process as normal.

Within that period, it is possible to file a so-called notice of opposition and to pay the official fee, without immediately setting out the full substantive arguments: the statement of grounds (written submissions) and certain supporting documents may therefore be filed within an additional one-month period running from the expiry of the opposition time limit.

This additional period serves a practical purpose: it allows the opponent to draft and substantiate the statement of grounds (likelihood of confusion / infringement of earlier rights, etc.) after having secured the opposition deadline. That said, this subsequent filing is strictly framed: the opponent may not broaden the scope of the opposition, nor rely on new earlier rights, nor target additional goods/services beyond those identified within the initial time limit.

The notice of opposition must in any event include (Article R.712-14 of the French Intellectual Property Code):

1. The opponent’s identity, together with information establishing the existence, nature, origin and scope of the earlier rights relied upon;
2. Identification of the contested application, together with specification of the goods/services targeted by the opposition; and
3. Evidence that the official fee has been paid.

For more information on this French opposition procedure, please see our specific article published on the subject .

Once the opposition has been declared admissible, the competent office proceeds notifies the applicant.Before the EUIPO, the procedure includes a specific feature: a “cooling-off” period, initially set at two months and extendable by mutual agreement between the parties. If no settlement is reached, the formal adversarial phase begins. For more information, please see our dedicated article on our blog page.

At this stage, the key issue is to determine the most appropriate strategy among several legally available options.

Strategic analysis of the notice of opposition

The first step for the applicant is to carefully analyze the opposition, which is based on three essential criteria:

• The comparison of the signs requires assessing the overall impression produced by the trademarks at issue. The analysis is conducted from visual, phonetic, and conceptual perspectives.
• The comparison of the goods and services focuses on their nature, purpose, function, potential complementarity, and distribution channels. Mere inclusion in the same Nice Classification class is insufficient, in itself, to establish similarity..
• The global assessment of the risk of confusion must take into account the interdependence of these factors. A low degree of similarity between the signs may be offset by a high degree of similarity between the goods and services, and vice versa.

An effective argument does not isolate a single criterion but methodically dismantles the opponent’s reasoning as a whole.

Drafting the response brief and supporting evidence

Following the analysis phase, drafting the response brief becomes a decisive strategic moment. It is not a simple formal reply but a structured legal argument aimed at clearly and convincingly demonstrating the absence of infringement of the earlier rights invoked.

The brief must first accurately recall the procedural elements: the office involved, the opposition number, the contested application reference, and the earlier rights relied upon. This contextual framework ensures that the argument is grounded in the precise legal setting.

The applicant must then set out the opponent’s arguments in order to analyze and challenge them point by point. This demonstrates a thorough understanding of the claims raised and helps identify weaknesses in the opposing reasoning. The argumentation must place the signs and goods or services within their actual economic context in order to establish the absence of confusion for the relevant public.

Finally, the brief must be supported by relevant and properly explained evidence. Proof of use, commercial documents, or market-related materials should be incorporated in a structured and reasoned manner. Overall coherence is essential: each development must serve a single objective, namely to convince the examiner that the contested mark may be registered without infringing the rights invoked.

Proof of use and alternative negotiation strategies

• Requesting proof of use: a decisive procedural lever

Where the earlier trademark relied upon has been registered for more than five years, the applicant may request that the opponent provide proof of genuine use for the goods or services invoked. This option exists before both the INPI and the EUIPO.

The burden of proof lies with the opponent, who must demonstrate real, public, and commercially justified use during the previous five years in the relevant territory.

Accepted evidence includes invoices, catalogues, advertisements, promotional materials, sales data, and contractual documents.

Use must be genuine and not merely token. In the absence of sufficient evidence, the opposition may be rejected in respect of the goods or services not properly substantiated.

This stage often represents a strategic turning point in the proceedings.

• Limiting the specification

The applicant may choose to voluntarily restrict the list of goods or services covered by the trademark application. This limitation can eliminate areas of conflict with the earlier right invoked and may lead to partial withdrawal or rejection of the opposition.

However, such limitation is definitive. It reduces the scope of protection of the trademark and must be assessed in light of future commercial exploitation plans.

In practice, this option frequently serves as a negotiation tool, particularly during the cooling-off phase before the EUIPO.

Conclusion

Responding to a trademark opposition requires technical mastery of trademark law, thorough factual analysis, and a drafting strategy aligned with the expectations of the competent offices. A response built on a solid demonstration of the absence of likelihood of confusion, supported by carefully substantiated evidence, not only neutralizes the opposition but also strengthens the legal security of your trademark.

Mastering this procedural stage is a major strategic issue for protecting your commercial identity and enhancing the value of your intangible assets.

Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What happens if the applicant does not respond to the opposition?

Failure to respond leads to the closure of the adversarial phase and generally results in a total or partial refusal of the application for the goods or services targeted by the opposition. Silence is treated as a waiver of the right to present arguments.

2. Can additional time be requested to prepare the response?

As a matter of principle, an extension of the time limit for filing a response is not available. Before both the INPI and the EUIPO, the time limits set for submitting observations are strictly regulated and cannot be extended upon simple request. Only specific grounds for suspension of the proceedings may be contemplated, in particular where the parties are engaged in settlement negotiations, and subject to strict compliance with the applicable procedural requirements.

3. Can an opposition be withdrawn during the proceedings?

Yes. The opponent may withdraw the opposition at any time, either as part of a settlement agreement or unilaterally. Withdrawal terminates the proceedings for the goods or services concerned. However, the opponent’s incurred costs are not automatically reimbursed. Any agreement should therefore be properly documented in writing.

4. Can new evidence be submitted after filing the response brief?

In principle, the offices set strict deadlines for the submission of evidence. Additional materials may sometimes be accepted, but their admissibility depends on the procedural stage and proper justification. Anticipating evidentiary strategy is therefore essential.

5. Can the applicant rely on good faith to overcome the opposition?

Good faith is not a decisive factor in assessing likelihood of confusion. The examination primarily focuses on an objective comparison of the signs and the goods or services. Nevertheless, evidence of prior peaceful coexistence or independent use may serve as contextual support in certain defense strategies.

This publication is intended to provide general guidance and to highlight certain issues. It is not intended to address specific situations nor to constitute legal advice.