Trademark

European and French case law now imposes a renewed discipline on trade mark filing. The days when a broad specification was enough to guarantee solid protection are over. Here is a breakdown of the key issues and best practices.

Why case law on sub-categories is changing the game

Filing a trade mark confers an exclusive right. But this right only exists in relation to the specific goods and services designated in the registration. In practice, the value of a trade mark depends as much on the sign itself as on the specification accompanying it.

For several years now, European and French case law has consistently reiterated a straightforward principle: a trade mark must not confer a purely theoretical monopoly over markets that its owner does not actually exploit. This requirement finds very concrete expression in the concept of autonomous sub-categories and in the strengthened control of genuine use.

This context is all the more significant as companies face an increase in oppositions, invalidity actions and counterclaims for revocation, especially where older trade mark portfolios cover very broad specifications.

The specification of goods and services: the trade mark’s true legal perimeter

For a long time, a “broad filing” approach prevailed. Applicants sometimes opted for generic wording or simply reproduced class headings, with the aim of maximising protection without having to anticipate in detail how the trade mark would be used.

Today, however, this strategy entails increased risk. Where a trade mark is registered for a broad category but is only used for part of that category, it may be partially revoked. Protection then remains only for the segments actually used, which can drastically reduce the scope of enforcement.

The legal framework: genuine use, revocation and the burden of proof

French law provides for revocation where a trade mark has not been put to genuine use for five consecutive years. The reference provision is Article L.714-5 of the French Intellectual Property Code, interpreted in line with the applicable European framework, in particular Article 18 of the EU Trade Mark Regulation (EUTMR).

One essential point for businesses: the burden of proof lies with the trade mark owner. In the event of a challenge, it is not for the third party to demonstrate non-use, but for the proprietor to prove genuine, relevant and dated use.

Furthermore, where the specification is broad and divisible, proof must be provided for the relevant sub-categories. This explains why certain portfolios, despite being intensively exploited, are nevertheless weakened.

Understanding autonomous sub-categories: a jurisprudential concept

The concept of an autonomous sub-category does not stem from any express statutory definition. It is a concept developed through case law to reflect economic reality: within a broad category, certain goods or services may form distinct, identifiable and coherent groups.

Case law focuses in particular on criteria relating to the purpose and intended use of the goods and services. What matters is the expected use by the public and the economic function of the product or service, rather than its formal classification.

In practice, an overarching category such as “transport”, “cosmetics” or “software” may cover very different realities. The court may therefore consider that such a category is divisible into autonomous sub-categories and require segmented proof of use.

The European “Ferrari” case law: balancing protection and proportionality

The Ferrari cases (C-720/18 and C-721/18) of 22 October 2020 clarified the CJEU’s reasoning on use in relation to specifications covering categories of varying breadth. The logic is structured around a practical distinction:

• Where a trade mark covers a precise and indivisible category, use in relation to part of that category may be sufficient.
• Conversely, where the category is broad and divisible, use must be proven for each identifiable autonomous sub-category.

This distinction is particularly useful when building a filing strategy. It prompts a simple question: will the category claimed be perceived tomorrow as a “homogeneous whole”, or as a set of distinct segments?

French case law: the Court of Cassation decisions of 14 May 2025

First decision (No. 23-21.296): taxi services and the “transport” category

In a first decision (Cass. com., 14 May 2025, No. 23-21.296), the French Court of Cassation provides a very concrete illustration of the requirement to segment goods and services into sub-categories. The trade marks at issue were registered for “transport” and “passenger transport” services. The proprietor demonstrated genuine use for taxi services, and the Court of Appeal had considered this sufficient.

The Court of Cassation adopted a more demanding approach. It criticised the lower court for failing to assess whether taxi services constituted an autonomous and coherent sub-category within the broader category of transport services. It recalled that such an assessment must be objective and based on the purpose and intended use of the services.

Second decision (No. 23-21.866): cosmetics and essential oils

The second decision rendered on the same day (Cass. com., 14 May 2025, No. 23-21.866) further confirms and refines this requirement. The trade mark was registered for several broad categories of goods, including cosmetics and essential oils. The proprietor relied on use relating to specific products such as textiles impregnated with active substances or composite products incorporating essential oils.

The Court of Cassation overturned the Court of Appeal’s reasoning, criticising it for failing to examine whether those products genuinely corresponded to the goods as registered or whether they constituted autonomous sub-categories requiring specific proof of use.

These decisions confirm that the French Supreme Court now requires a strict alignment between the evidence of use relied upon and the exact scope of the specification.

The court’s power to subdivide the specification

One of the key lessons from recent case law is that the court is not bound by the wording of the specification as drafted. Even if the applicant has not provided for any subdivision, the court may carry out an objective division into autonomous sub-categories where justified by the purpose and intended use of the goods or services.

This power has very tangible effects. A simple and overarching specification may, in litigation, be broken down into multiple segments. The proprietor then faces a heavier evidentiary burden than anticipated.

In practice, this mechanism makes the filing strategy inseparable from the evidentiary strategy. Filing broadly is not merely a legal decision; it is also a documentary, internal and operational decision.

Filing a trade mark: the right level of precision

An effective filing strategy is based on a careful balance. If the specification is too broad, the trade mark may be vulnerable to revocation. If it is too narrow, the trade mark may be insufficient to support commercial development or to act against close competitors.

The question is therefore not whether to file broadly or narrowly, but how to file intelligently, calibrating the specification so that it is both commercially useful and legally defensible in the long term.

Anticipating proof of use: an operational component of trade mark strategy

In practice, the most sensitive issue is proof of use. When a trade mark is challenged, the question is not merely to prove that it is used. It is necessary to prove that it is used for the goods and services covered by the registration, and sometimes for autonomous sub-categories identified in litigation.

For each plausible sub-category, it is recommended to gather specific and segmented evidence:

• Invoices or order forms identifying the type of product or service, with dates and geographical areas.
• Catalogues, brochures, commercial leaflets or archived web pages showing the trade mark associated with the relevant segment.
• Targeted advertising campaigns, announcements or promotional materials, dated and linked to a specific product or service.
• Internal reports by business segment, where their content can be produced and relied upon in litigation.
• Relevant contracts, in particular licences, distribution, maintenance, or evidence showing exploitation by an authorised third party.

Each item of evidence should be preserved within a structured file: not as an undifferentiated mass of documents, but as an organised set by sub-category.

Use by subsidiaries, licensees or distributors

In many corporate groups, trade mark use may be carried out by subsidiaries, distributors or licensees. Case law, in line with Article 18(2) EUTMR, generally accepts that use by an authorised third party may be taken into account, provided that such use takes place with the proprietor’s consent.

This nevertheless requires contractual and documentary organisation. It must be possible to establish the existence of authorisation and to demonstrate the reality of exploitation under the trade mark.

Use in a modified form: securing trade mark variants

Companies rarely use a trade mark in a form identical to the registered version. European and French courts, in line with Article L.714-5(3) of the French Intellectual Property Code and Article 18 EUTMR, accept use in a modified form provided that the modification does not alter the distinctive character of the sign.

As part of a filing strategy, it may therefore be advisable to anticipate certain variants by filing the word trade mark alone or by securing the main versions actually used.

Sub-categories and litigation: impact on opposition, invalidity and competition

The issue of sub-categories is not limited to revocation. It also affects disputes relating to likelihood of confusion, as the similarity of goods and services is assessed with increasing granularity.

For businesses, the key takeaway is that filing strategy must now be read in mirror with litigation strategy. A well-filed trade mark is easier to defend, easier to enforce, and more dissuasive.

Conclusion – Filing today means preparing tomorrow’s defence

Case law on autonomous sub-categories imposes a new discipline in trade mark filing strategy. Filing can no longer be conceived as abstract protection disconnected from actual use. It must be calibrated according to real markets and the evidence the company will be able to produce.

In practice, an effective filing strategy combines three dimensions:

• An intelligently structured specification.
• Anticipation of possible segmentation.
• Proactive organisation of evidence.

This approach transforms the trade mark into a genuinely defensible and sustainable asset, serving the company’s growth and legal security.

FAQ – Frequently Asked Questions on Sub-Categories and Proof of Use

What is an autonomous sub-category in trade mark law?
An autonomous sub-category is a coherent group of goods or services, identifiable within a broader category, based on its purpose and intended use. This concept, developed through European case law (notably the CJEU’s Ferrari rulings) and adopted by the French Court of Cassation, allows the court to segment a trade mark specification and verify that genuine use is demonstrated for each relevant segment.

What is the time limit for demonstrating genuine use of a trade mark in France?
Under Article L.714-5 of the French Intellectual Property Code, the trade mark owner must demonstrate genuine use within five years following registration. After this period, the mark is exposed to a revocation action if no genuine use can be proven.

Who bears the burden of proving use?
It is the trade mark owner who must prove genuine use when challenged, not the third party initiating the revocation action. This rule follows from the principle that it would be disproportionate to require the applicant to prove a negative fact (non-use).

My trade mark is used by a licensee: does that count as genuine use?
Yes, case law accepts that use by an authorised third party (licensee, subsidiary, distributor) may constitute genuine use, provided it takes place with the proprietor’s consent and the mark continues to fulfil its essential function of guaranteeing origin. However, this must be properly documented (licence agreement, distribution agreement, group policy).

Can I use my trade mark in a slightly different form from the registered version?
Yes, both French and European law accept use in a modified form, provided the modification does not alter the distinctive character of the sign. However, substantial visual or conceptual changes may prevent recognition of use of the registered mark. It may be prudent to also register the main variants in use.

How should I organise my proof of use in practice?
It is recommended to build a structured file for each sub-category of goods or services, including dated invoices, catalogues, advertising materials, website screenshots, internal reports by business segment, and licence or distribution agreements. Each item should be dated, geographically located, and linked to a specific product or service.

Is an overly broad specification automatically vulnerable?
Not necessarily, but the risks are increased. If the mark is registered for a broad and divisible category, the court may subdivide that category into autonomous sub-categories and require segmented proof of use. If the proprietor only exploits part of the category and cannot document use for the other segments, the mark may be partially revoked.

What is the difference between the Nice Classification and autonomous sub-categories?
The Nice Classification is an international administrative tool that organises goods and services into 45 classes. Autonomous sub-categories are a jurisprudential concept based on economic and functional logic. The French Court of Cassation has expressly stated that the Nice Classification is merely an indication and does not bind the court in its analysis of genuine use.

This article is based on the contribution of Dreyfus & Associés to the “Trade Marks & Copyright 2026” Practice Guide published by Chambers and Partners.

For any questions regarding your trade mark filing strategy or the organisation of your proof of use, contact us: contact@dreyfus.fr

In summary

• Anticipate before harm occurs : register your key domain names, including variations, as soon as you file your trademark.
• Monitor continuously: set up online monitoring for domain names, social networks, and marketplaces.
• React quickly: have a clear plan, defined procedures, and expert support to contain damage effectively.

Dreyfus law firm supports businesses in securing their digital presence by combining legal strategy, technical governance, and proactive monitoring.

Introduction

In today’s digital world, visibility drives reputation and growth , but it also exposes trademarks to ever-increasing risks.

The thematic report published by the French IP Office (INPI) entitled “Trademarks and online presence: effectively protecting against digital infringements” has highlighted the wide range of digital threats faced by trademark holders trademark: cybersquatting, typosquatting, phishing, spam, identity theft on social networks, and counterfeiting on marketplaces.

Yet, these attacks can be anticipated and managed effectively through a structured strategy.

With more than 20 years of experience in intellectual property, this article explores the key risks, preventive measures, and best practices for effective trademark protection.

Dreyfus law firm helps companies move from a reactive approach to a proactive and resilient trademark protection strategy.

The main risks for a trademark online

• Cybersquatting: registration of a domain name identical or similar to a trademark, often to divert traffic or resell it at a high price.
• Typosquatting: creation of domains with slight spelling variations (e.g., “goggle.com”) to deceive users and collect their data.
• Phishing: fake websites or emails imitating a trademark to steal confidential information.
• Spam: mass email campaigns using domain names resembling the trademark, damaging its image and deliverability.
• Counterfeiting on marketplaces and social media: unauthorized products sold under the trademark’s identity.
• Identity theft: fake social accounts created in the trademark’s name to mislead consumers.

These risks combined can erode consumer trust, damage SEO performance, and severely impact trademark reputation.

Prevention: anticipating the threats

Register strategic domain names

We recommend securing domain names at the same time as filing a trademark.

Best practices include:

• registering major extensions (.com, .fr, .eu, etc.);
• reserving orthographic or phonetic variants;
• considering new relevant extensions (e.g., .shop, .tech).

This proactive approach reduces exposure to domain-based attacks in a first-come, first-served environment.

Set up active monitoring

Continuous monitoring helps detect:

• registrations of domains similar to your trademark;
• fake social media accounts;
• counterfeit products sold online.

Quick detection enables faster action and minimizes damage.

Secure your digital assets

• Implement advanced security protocols (DNSSEC, HTTPS, DMARC, SPF, DKIM, MFA).
• Manage subdomains and redirects with strict internal rules.
• Integrate cybersecurity into trademark governance.

Dreyfus law firm also advises establishing a digital asset inventory, assigning responsibilities for each domain, and maintaining updated records.

Responding to an infringement

Identify and assess the infringement

When a potential infringement is detected:

• determine the infringement type (cybersquatting, phishing, counterfeiting, etc.);
• assess the level of urgency and potential damage;
• identify the responsible party or domain holder.

Take immediate corrective actions

• Request the suspension or transfer of the abusive domain through a UDRP or local procedure.
• Report fake accounts to platforms for prompt removal.
• Inform customers and partners transparently if their data or trust might be affected.
• Launch a controlled communication plan to mitigate reputational damage.

Learn from every incident

Each incident is an opportunity to strengthen internal processes:

• update security and governance procedures;
• expand domain portfolio coverage;
• provide regular staff training;
• record incidents and outcomes to refine prevention.

The digital protection checklist

• Map all official domain names and social accounts.
• Reserve key domains and critical variants.
• Activate DNSSEC, DMARC, HTTPS, and other core security measures.
• Establish a multi-channel monitoring system (domains, social media, marketplaces).
• Define a clear emergency response plan.
• Train employees to identify early warning signs.
• Measure key indicators: detection time, resolution time, and avoided costs.

Why this approach matters

A valuable intangible asset

Your trademark is more than a name ; it’s a strategic intangible asset.

Losing control online can destroy years of investment in trust and reputation.

A lever for trust and compliance

Consumers, partners, and authorities expect digital environments that are secure and transparent.

Robust online protection enhances credibility and demonstrates compliance.

A lasting competitive advantage

Prevention is always cheaper than crisis management.

Trademarks that anticipate risks gain in resilience and long-term performance.

How Dreyfus law firm supports companies

Dreyfus law firm helps trademark owners build a robust digital protection framework through six pillars:

1. Risk audit: identifying vulnerabilities and prioritizing actions.
2. Portfolio strategy: planning domain registrations and defensive coverage.
3. Governance: defining internal policies for domain management.
4. Monitoring: tracking domains, social networks, and marketplaces.
5. Crisis management: legal and technical assistance during an infringement.
6. Training: educating internal teams about digital threats and best practices.

With recognized expertise in intellectual property and digital law, the firm operates at the intersection of legal strategy, technology, and cybersecurity,  in France and internationally.

Conclusion

Protecting a trademark online is no longer optional,  it’s a core element of corporate strategy.

By combining preventive measures (registration, monitoring, security) and rapid response protocols, companies can reduce their exposure and strengthen customer trust.

Dreyfus law firm works alongside businesses to design and implement strong, adaptable digital protection strategies aligned with their global ambitions.

Q&A

What is cybersquatting?
It’s when a third party registers a domain name identical or similar to a trademark, intending to divert traffic or resell it.

How can a trademark protect itself online?
By combining trademark registration, strategic domain reservations, security protocols, and continuous monitoring.

What should I do if someone impersonates my trademark?
Gather evidence, identify the domain holder, and launch a UDRP or contact the relevant platform to request the blocking, deactivation or transfer of the domain name.

Why monitor social media?
Fake accounts can damage trademark trust, spread misinformation, or defraud customers , early detection is essential.

What does Dreyfus law firm offer?
The Dreyfus law firm helps companies design and implement legal and technical strategies for protecting and managing their trademark online.

Introduction

In the field of intellectual property, trademark protection is a major issue for businesses. Beyond registering a trademark, there are strategies to anticipate conflicts and avoid costly litigation. Pre-litigation in trademark law is a crucial phase in which preventive actions help resolve disputes before they escalate into court proceedings. This process is essential to secure a company’s rights and preserve its reputation while avoiding unnecessary legal expenses.

This article explores the role of pre-litigation in trademark law, how it helps avoid conflicts, and the practical steps companies can take to use it effectively.

Protecting your brand : a strategic imperative

Protecting a trademark is essential to guarantee a company the exclusive use of its distinctive sign. This protection, obtained through registration with the INPI in France and the EUIPO in the European Union, helps prevent identity theft and preserves the uniqueness of the company’s image.

1.1 Standing out effectively in a competitive market

A registered trademark is a symbol of consumer recognition and loyalty. It ensures the company that its sign is protected against unauthorized use, allowing it to distinguish its products and services from those of competitors.

1.2 A brand as a valuable asset for the company

A trademark is not just a sign; it is also a valuable asset. A protected trademark enables the company to strengthen its market position, enhance its image, and even generate revenue through exploitation, assignment, or licensing.

Pre-litigation in trademark law: a strategic response before trial

Pre-litigation refers to the steps taken before any court proceedings in order to resolve a dispute amicably or preventively. The goal is to settle a potential trademark conflict without resorting to lengthy and costly legal procedures.

2.1 Identifying risks before they become disputes

One of the main tools in pre-litigation is monitoring. By quickly identifying any trademark infringement, the company can respond effectively to protect its rights before the situation worsens. Monitoring can cover both registered trademarks and unauthorized uses of distinctive signs on online platforms such as social networks, where third parties might use similar or identical marks for commercial purposes, as well as on e-commerce sites.

2.2 Reacting early: cease-and-desist letters and negotiation as key tools

When a conflict is detected, the first pre-litigation action is often to send a formal warning letter. This letter requests the other party to cease using the disputed trademark. If this step fails, a coexistence agreement or similar negotiation may be considered.

Pre-litigation: a lever to prevent legal escalation

3.1 Controlling costs and avoiding lengthy procedures

Judicial procedures can be extremely expensive in terms of legal fees and time. Pre-litigation helps identify issues as they arise and resolve them before they escalate into lawsuits. This avoids significant costs associated with court proceedings.

3.2 Protecting brand image discreetly

Legal disputes can be perceived negatively by consumers. Even a publicly won lawsuit can tarnish a brand’s image. Pre-litigation helps maintain a positive reputation by resolving conflicts discreetly and swiftly.

3.3 Optimizing resources: time, energy, finances

Legal conflicts demand considerable human and financial resources. Turning to pre-litigation allows the company to stay focused on its core business and avoid diverting energy toward a prolonged dispute.

4. Trademark disputes : hidden but formidable costs

Costly disputes extend beyond legal fees and can severely affect a company’s strategy. Key examples include :

• Legal and expert fees: Lawyers’ fees, court expenses, and expert reports can amount to substantial sums
  • Disruption to business operations: The company spends significant time defending itself rather than growing its business
  • Missed opportunities: Engaging in a conflict can block partnerships, damage brand image, and lead to lost economic prospects

Anticipating such issues helps a company avoid the burden of a lengthy legal process, which may end up being far more expensive than preventive measures.

Building an effective strategy to avoid costly disputes

5.1 Implementing rigorous trademark monitoring
Implementing a trademark monitoring system is essential. This includes regularly checking new trademark filings and online activity. It helps detect potential infringements before they become major issues.

5.2 Smart negotiation with similar brands

In certain situations, it may be wise to negotiate coexistence agreements with companies using similar trademarks. This allows for clear boundaries regarding brand usage and helps prevent conflicts.

5.3 Acting without litigation: the amicable path as first response

If a conflict arises, sending a warning letter is often a prudent first step. If this proves ineffective, mediation or negotiation can help resolve the issue without resorting to court proceedings. These amicable approaches are usually quicker and less expensive.

5.4 Getting the right legal advice early On

It is advisable to consult a trademark law specialist to receive precise and tailored legal advice. A detailed legal assessment will help determine the most appropriate pre-litigation strategy.

Pre-litigation tools: anticipate to better protect

The following tools can be used to avoid costly trademark disputes:

• Legal and commercial watch: Monitoring trademark databases and online platforms
  • Trademark opposition: Challenging the registration of similar trademarks upon filing
  • Mediation and amicable resolution: Using mediation services to reach a settlement without litigation

Conclusion : preventing means protecting your brand for the long term

Pre-litigation in trademark law is an essential tool for any company aiming to protect its brand identity without resorting to costly legal disputes. Through proactive measures, companies can minimize legal risks, maintain their brand reputation, and optimize internal resources.

Dreyfus & Associates offers recognized expertise in pre-litigation and trademark dispute management. We support our clients in designing preventive strategies to anticipate risks and effectively protect their intellectual assets.

Nathalie Dreyfus and the Dreyfus team.

FAQ

1. What is pre-litigation in trademark law ?

Pre-litigation refers to all amicable actions taken before initiating legal proceedings to resolve a conflict related to the use of a trademark. It includes monitoring, risk analysis, sending cease-and-desist letters, and negotiating agreements. This phase often allows for resolving disputes without going to court, thereby reducing costs and preserving business relationships.

2. Why monitor competing trademarks ?

Monitoring competing trademarks is essential for any business that wants to protect its identity effectively. A watch system allows companies to quickly identify new trademark applications that may cause confusion with their own, enabling them to act promptly to avoid disputes. It also helps detect unauthorized use of the brand online, on social media, or in points of sale, whether it involves imitation or abusive exploitation. Regular monitoring is also a tool for early detection of counterfeiting, which can seriously damage a company’s reputation and revenue if not addressed quickly.

3. How can trademark conflicts be avoided ?

It is crucial to check, before filing, that the chosen trademark does not infringe on existing rights. The application should clearly define the targeted products, services, and territories. Regular monitoring helps identify similar uses or filings. In case of risk, swift action such as an opposition or cease-and-desist letter is necessary. Finally, being assisted from the outset by a specialized attorney helps secure the entire protection strategy.

In the ever-changing world of intellectual property, trademarks are strategic assets that distinguish products and services in the marketplace. However, their value lies not only in their registration, but also in the vigilance shown by their owners to prevent unauthorized use. One of the major legal pitfalls in this regard is foreclosure by tolerance, a mechanism that can deprive the owner of their rights if they fail to act within the prescribed time limits.

Forfeiture by tolerance cannot be equated with prescription. Forfeiture is based on the voluntary inaction of the trademark owner, whereas prescription is a rule of common law linked to time. Forfeiture prevents any action for invalidity or infringement, even if the facts are recent.

I – Understanding forfeiture by tolerance in trademark law

Definition and legal framework

Laches refers to a situation in which the owner of an earlier trademark knowingly tolerates, for a continuous period of five years, the use of a later registered trademark without taking any action. In European law, Article 61 of the EU Trademark Regulation (EUTMR) codifies this mechanism:

“1. The owner of a trademark of theEuropean Union who has, for five consecutive years, tolerated the use of a later European Union trademark in the European Union while being aware of that use may no longer apply for a declaration of invalidity of the later trademark on the basis of the earlier trademark for the goods or services for which the later trademark has been used, unless the registration of the later European Union trademark was made in bad faith.

2. The proprietor of an earlier national trademark referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) who has, for five consecutive years, tolerated the use of a later EU trademark in the Member State where that earlier trademark or other earlier sign is protected, while being aware of that use, may no longer apply for a declaration of invalidity of the later trade mark on the basis of the earlier trade mark or the other earlier sign in respect of the goods or services for which the later trade mark has been used, unless the registration of the later EU trade mark was made in bad faith.
3. In the cases referred to in paragraphs 1 or 2, the proprietor of the later European Union trademark may not oppose the use of the earlier right, even if that right can no longer be invoked against the later European Union trademark.

Where the conditions are met, the person who has tolerated the use may no longer contest the validity of the later trademark or prohibit its use.

Essential conditions for forfeiture

For forfeiture by tolerance to occur, four cumulative conditions must be met:

1. Knowledge: the proprietor of the earlier trademark must have been aware of the use of the later trademark.
2. Continuous use: the later trademark must have been used continuously for five years.
3. Good faith: the later trademark must have been registered and used in good faith.
4. Absence of legal action: no legal action must have been taken during this period.

Clarification of the concept of “knowledge”

The condition of actual knowledge by the owner of the earlier trademark is a central criterion for forfeiture by acquiescence, but also one of the most debated.

According to the settled case law of the General Court of the European Union (Case T-150/17) and the Court of Justice of the European Union (Case C-381/12 P), knowledge must be actual, not merely presumed. In other words, implicit knowledge or knowledge inferred from the behavior of the proprietor is not sufficient. Proof of actual knowledge of the use of the later trademark is required.

In particular, the Court of Justice recalled in judgment C-381/12 P that:

“The proprietor of an earlier trademark cannot be regarded as having had knowledge of the use of a later trademark unless he actually had knowledge of that use, and not merely implicit knowledge or knowledge inferred from the behavior of the proprietor of the trademark.”

Similarly, the European Union Court of Justice in case T-150/17 clarified:

“Consequently, the proprietor of a trade mark challenged by a declaration of invalidity cannot merely prove potential knowledge of the use of his trade mark by the proprietor of an earlier trade mark, nor can he adduce consistent evidence capable of giving rise to a presumption of such knowledge.”

It is therefore not sufficient that the later trademark is visible on the market or that there are infringement proceedings in other jurisdictions. For example, the mere presence of the disputed trademark in the results of an automated monitoring system does not constitute sufficient evidence in the absence of other concrete evidence.

However, evidence of actual knowledge may result from:

• correspondence between the parties referring to the use of the trademark;
• joint presence at trade fairs where the trademarks are used;
• or the signing of a prior coexistence agreement (case 3971 C).

In case R 1299/2007-2, the EUIPO clarified an important point concerning the condition of knowledge in the context of estoppel by acquiescence. It ruled that the proprietor of the earlier trademark does not need to be aware of the registration of the later trademark, i.e., it is not necessary for them to have formal knowledge that the later trademark has been filed or registered with the competent office. However, it is essential that the proprietor of the earlier trademark has actual knowledge of the use of the later trademark during the relevant period, i.e., that they know that the trademark is being used on the market, despite its registration.

Thus, the period of tolerance begins to run only from the moment when the proprietor of the earlier trademark has actual and objective knowledge of the use of the later trademark, and not simply of its existence as a filing or administrative registration, for five consecutive years. The Board of Appeal ruled, in particular:

“What is important in this context is the objective circumstance that the sign (the use of which was knowingly tolerated by the applicant for annulment) must have existed for at least five years as a Community trademark (CTM).”

II – Risks associated with failure to defend trademark rights

Legal consequences

Failure to take timely action against the unauthorized use of an identical or similar trademark may result in a permanent loss of rights. Once the right has been forfeited through tolerance, the prior owner can no longer bring an action for invalidity or infringement against the later trademark for the products or services concerned. This legal barrier requires absolute responsiveness in order to maintain the enforceability of one’s rights.

Economic consequences

The economic effects of a failure to defend one’s rights are equally damaging:

• Weakening of the trademark: The coexistence of similar trademarks weakens the uniqueness and symbolic value of the earlier trademark. The strength of a trademark lies largely in its ability to distinguish itself clearly from other signs used by competitors. When a similar trademark is tolerated or left unopposed, this differentiation gradually becomes diluted. The earlier trademark then loses some of its exclusivity, which can alter its symbolic value among consumers and business partners. This deterioration affects not only the qualitative perception of the trademark, but also its commercial strength and its ability to embody the identity and values of the company.
• Consumer confusion: Similar trademarks can confuse the public, undermine trust, and divert sales. Consumers faced with a fragmented range of similar signs may find it difficult to clearly identify the origin of products or services. This uncertainty undermines consumer confidence, which can result in hesitation to purchase or even rejection of the market. Furthermore, confusion may encourage the misuse of the reputation and renown of the earlier trademark by the owners of later trademarks, to the detriment of consumer loyalty to the original trademark.
• Loss of market share: Competitors taking advantage of the similarity may capture a share of the customer base by unfairly benefiting from the reputation of the original trademark. This capture of customers is often based on an illegitimate appropriation of the reputation and marketing efforts of the original owner. The impact is reflected in a decrease in sales and, ultimately, an erosion of the original brand’s competitive position. In a competitive market environment, this loss can permanently undermine the economic and strategic viability of the company.

III – Strategies for active trademark protection

Proactive monitoring and detection

Rigorous market monitoring is essential. The implementation of monitoring systems enables the rapid detection of infringing registrations or uses. Regular audits and analysis of national and international databases are also crucial tools for anticipating litigation.

Legal action and timely responses

As soon as unauthorized use is identified, it is advisable to act without delay. This may take the form of:

• formal notices (see limitations below),
• oppositions to the registration of conflicting trademarks,
• or legal action if necessary.

These measures not only serve to avoid foreclosure, but also strengthen the legitimacy and exclusivity of the trademark.

Interruption of the foreclosure period

The starting point and suspension of the grace period are also the subject of extensive case law.

The CJEU ruling C-482/09 established that simply sending a formal notice is not sufficient to interrupt the foreclosure period, unless this letter leads to a concrete result (e.g., voluntary withdrawal, a coexistence agreement, or the initiation of legal proceedings).

Only administrative or judicial action—such as an action for invalidity before the INPI or the European Union Intellectual Property Office (EUIPO) or an action before the national courts, such as an action for infringement—can effectively interrupt the five-year period.

A recent ruling (Case C-466/20) confirmed that sending an unsuccessful warning, even if it proves clear opposition, is not sufficient to prevent foreclosure if no formal action follows. The Court specifies that:

“Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 as meaning that the sending of a warning letter is sufficient, in itself, to interrupt the limitation period would allow the proprietor of the earlier trademark orother earlier right to circumvent the limitation period by tolerance by repeatedly sending, at intervals of nearly five years, a letter of formal notice. Such a situation would undermine the objectives of the limitation period by tolerance, as recalled in paragraphs 46 to 48 of this judgment, and would deprive that system of its effectiveness.”

This decision highlights the importance of active vigilance and legal responsiveness in the face of unauthorized use of an earlier trademark.

Similarly, the signing of a coexistence agreement interrupts the period of foreclosure by tolerance, thereby suspending the period during which the owner of the earlier trademark could lose its rights due to its tolerance. However, if that agreement is subsequently breached or ceases to have effect, a new period of five years begins to run, provided that the proprietor of the earlier trademark again becomes effectively aware of the use of the later trademark. This rule was clarified by decision R 267/2014-2.

In that case, the Board of Appeal held, inter alia:

“Consequently, since the application for a declaration of invalidity was filed on July 11, 2012, the contested decision correctly concluded that less than five consecutive years had elapsed between the end of the verbal agreement, i.e., from the moment when the applicant for invalidity had the opportunity not to tolerate the use of the contested Community trademark, and the application for a declaration of invalidity. On the other hand, even if it were considered that the verbal agreement between the parties had not been breached and had ended when the proprietor of the Community trademark filed opposition against the Community trademark application ‘BONASYSTEMS’ on February 16, 2010, that verbal agreement should, in the absence of evidence to the contrary, be considered still valid. Consequently, the proprietor of the earlier trade mark is still not in a position to refuse to tolerate the use of the latter Community trade mark in the United Kingdom. It follows that the application for a declaration of acquiescence must be dismissed.

Thus, the period of forfeiture can only be resumed if two conditions are met simultaneously: the effective termination of the coexistence agreement and the prior proprietor’s awareness of the continued use of the later trademark.

Conclusion

Actively defending your trademark is not just a legal obligation: it is a strategic imperative. Knowing and anticipating the effects of foreclosure by tolerance is essential to preserving the value, exclusivity, and integrity of a trademark portfolio. A policy of systematic vigilance, combined with targeted and rapid responses, is the best guarantee for ensuring the longevity of an asset as sensitive as a trademark.

The law firm 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 is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

This article was published on the Village Justice website.

FAQ

The rise of artificial intelligence (AI) has revolutionized numerous sectors, including brand naming. Many companies now question whether a name generated by AI can benefit from legal protection as a trademark. This article reviews the relevant French legal framework and analyzes whether such a name can be registered, provided it complies with the provisions of the French Intellectual Property Code (Code de la propriété intellectuelle, CPI).

The Legal Framework for Trademarks in France

Definition and Acquisition of Trademark Rights

According to Article L.711-1 of the French Intellectual Property Code, a trademark is defined as a sign capable of distinguishing the goods or services of a natural or legal person from those of others. Ownership of a trademark is acquired through registration, pursuant to Article L.712-1 of the same code. Registration grants the holder exclusive rights over the trademark for the goods or services listed.

Conditions for Trademark Validity

For a trademark to be valid and registrable, it must meet the following conditions:

• Distinctiveness: The sign must be capable of distinguishing the goods or services of one company from those of another.
• Lawfulness: The sign must not be contrary to public order or accepted principles of morality.
• Non-deceptiveness: The sign must not mislead the public, particularly regarding the nature, quality, or origin of the products or services.
• Availability: The sign must not infringe any prior rights, such as already registered trademarks or protected business names.

These criteria are outlined in detail by the French National Institute of Industrial Property (INPI).

Applicability to AI-Generated Names

Compliance with Legal Requirements

A brand name generated by artificial intelligence may be registered in France as long as it complies with the above-mentioned conditions. The mere fact that the name is AI-generated does not preclude registration, provided it is distinctive, lawful, non-deceptive, and available. Notably, Article L.711-1 CPI does not impose any requirement regarding the origin of the sign, which means names generated by automated systems are not excluded from protection.

Specific Considerations Related to AI

Different considerations apply under copyright law. Unlike trademark law, which is focused on distinctiveness and availability, copyright protection requires human creative input and that the work reflects the author’s personality. Indeed, Article L.112-1 of the French Intellectual Property Code states that “works of the mind, whatever their genre, form of expression, merit, or purpose,” are protected, provided they are original.

As such, while a name generated by AI is unlikely to qualify for copyright protection without human input, it can nevertheless be registered as a trademark, assuming it fulfills the requirements set out in Articles L.711-1 et seq. of the CPI.

Recommendations for Businesses

Registering a trademark that results from a process involving AI requires a legally sound and strategic approach. Although the law does not exclude names generated by AI, their validity depends on a detailed legal analysis under the French Intellectual Property Code.

It is therefore essential to consult with an intellectual property expert – such as a specialized attorney or industrial property counsel – to secure the entire process. This professional can:

• Assess the compliance of the name with the validity criteria set out in Articles L.711-1 and following, particularly its distinctiveness, lawfulness, and lack of conflict with prior rights;
• Proceed with a thorough clearance search, which is critical to avoid future legal disputes;
• Review the terms and conditions of the AI tools used, particularly regarding ownership or assignment of the generated content, which may include restrictive clauses;
• Structure and document the name creation and selection process, to demonstrate, if necessary, a substantial and voluntary human intervention in the final choice.

This approach significantly strengthens the legal security of the trademark filing and helps anticipate risks related to the algorithmic origin of the sign.

Conclusion

Trademarks generated by artificial intelligence can be protected under French law, provided they meet the requirements of the Intellectual Property Code. By following the appropriate steps and involving qualified legal counsel, companies can effectively safeguard brand names created with the help of AI tools.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on trademark protection, and litigation support across multiple jurisdictions.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

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FAQ

Effective trademark management in France requires a thorough mastery of the administrative procedures needed to challenge a trademark’s validity or obtain its revocation. The French National Institute of Industrial Property (INPI) provides simplified mechanisms for invalidation (nullity) and revocation (déchéance), enabling stakeholders to maintain fair practices in the field of trademarks.

In 2023, trademark-related cases account for 91% of all procedures before the INPI. Invalidation actions have risen to 22% (compared to 19% in 2022), while revocation procedures have decreased from 17% to 9%.

Introduction to Invalidation and Revocation Procedures before the INPI

The procedures for invalidation and revocation, introduced by the EU Trademark Package in 2020, allow you to challenge improper registrations or revoke a trademark. They offer a faster and more cost-effective alternative compared to court proceedings.

• Invalidation (Nullity): The trademark was invalid from the moment it was registered. It is therefore removed from the register with retroactive effect.
• Revocation (Déchéance): The trademark has lost its validity due to events occurring after its registration. Its effects end only for the future.

Key statistics:

• In 2023, 60% of successful invalidation actions were based on absolute grounds.
• Favorable revocation decisions for non-use represent 75% of cases initiated since 2021.

These tools protect market integrity and ensure fair competitive practices.

The Invalidation Procedure

Invalidation aims to eliminate trademarks that should never have been registered.

Absolute Grounds for Invalidation

A trademark may be invalidated if it:

• Lacks distinctiveness: e.g., generic or descriptive terms.
• Is contrary to public policy or accepted principles of morality.
• Misleads the public: e.g., about the geographical origin or quality of the products.

Relative Grounds for Invalidation

A trademark may be invalidated for infringing prior rights:

• Identical or similar trademark already registered.
• Pre-existing copyright, trade names, or domain names.

Dive Deeper: When a trademark is challenged on relative grounds, it is crucial to present a clear comparative analysis of the distinctive elements, including phonetics, appearance, and meaning. Citing relevant case law bolsters your arguments.

Case Law Example: In 2022, a French trademark was invalidated for causing confusion with an EU trademark registered 5 years earlier (Source: INPI).

Extended Practical Example: A competitor registered a trademark using the dominant color of a pre-existing company, combined with similar wording. An expert analysis of consumer perception was crucial in convincing the INPI to invalidate the trademark on relative grounds.

The Revocation Procedure

Revocation addresses abuses or omissions that occur after registration.

Non-Use of a Trademark

If a trademark is not used within 5 years of its registration, it can be revoked. For instance, a trademark registered in 2017 with no proven use by 2023 could be subject to revocation.

Focus: Evidence of use may include invoices, advertising materials, or packaging samples. The absence of such documents weakens the owner’s position.

Becoming a Generic Term

Abusive use can cause a trademark to lose its distinctiveness. Examples include Aspirin or Kleenex, which have become generic terms in some countries.

Misleading Use

Use that misleads consumers about the nature or origin of products may lead to revocation.

Recent Example: In 2021, a trademark was revoked for misleading use after being applied to products radically different from those stated in the registration.

Administrative Process before the INPI

Filing the Application

• Identify the targeted trademark.
• State the grounds (invalidation or revocation).
• Include the supporting evidence (non-use reports, market research, etc.).

Practical Tip: For complex applications, engaging an attorney can be pivotal to avoid rejection for incomplete filings.

Adversarial Phase

Each party presents its arguments and evidence through structured exchanges. Counter-evidence may include customer testimonials or financial data.

Final Decision and Appeals

• Effects of Decisions:
  • Invalidation: Retroactive effect.
  • Revocation: Future effect only.
• Appeals may be filed with the Paris Court of Appeal.

Practical Cases and Case Law Examples

1. Example of an Invalidation Action: A French trademark was invalidated for failing to meet distinctiveness requirements (Source: INPI, case 2022-03).
2. Example of a Revocation Action: A trademark not used within 5 years of registration was revoked in 2023 for non-use (Source: INPI case law).

Advanced Strategies to Maximize Your Chances of Success

1. Comprehensive Evidence Analysis: Gather persuasive documents such as expert reports, market studies, or consumer surveys to substantiate your claims.
2. Leverage Case Law: Reference similar cases to strengthen your position.
3. Prepare a Strategic File: Ensure each piece of evidence is presented coherently and in an organized manner.
4. Professional Support: Consult with intellectual property experts to maximize your odds of success.

Analysis of Recent Trends in Invalidation Actions

Increase in International Actions

With the rise of cross-border trade, trademark disputes involving international parties have risen significantly. Many companies seek to extend trademark protection beyond national borders, leading to conflicts with similar or identical trademarks registered in other jurisdictions. This trend is pushing owners to step up monitoring of their intellectual property assets.

Key Statistics:

• In 2023, 35% of invalidation actions involved international parties (source: INPI).
• A 15% increase in oppositions to European trademarks was observed during the same period.

The Rise of Digital Tools

The INPI and other organizations have implemented digital platforms to streamline the filing and tracking of procedures. These tools offer greater transparency and faster management of disputes. However, they also demand quick adaptation by companies to ensure accuracy and completeness in their filings.

Focus on Distinctiveness

Invalidation actions based on a lack of distinctiveness have been particularly numerous in 2023. Companies are now using more rigorous methods to demonstrate that contested trademarks are not sufficiently distinct from generic products or services.

Resources and Practical Tools

Useful Links for Professionals:

1. INPI Platform: Link to the filing portal
   • Enables online submission of invalidation and revocation requests.
   • Provides educational resources on procedures.
2. INPI Trademark Database: Trademark search
   • Tool for searching registered trademarks and identifying potential conflicts.
3. WIPO (World Intellectual Property Organization):
   • Platform for monitoring trademarks internationally (WIPO link).
4. Practical Guides:
   • Download the guide on trademark disputes (INPI).

Analysis and Monitoring Tools:

• Semrush / Ahrefs / Ubersuggest: Keyword analysis associated with trademarks to anticipate disputes.
• TrademarkVision: AI-based tool for detecting visual similarities between trademarks.
• Google Alerts: Track public mentions of your trademark or potential conflicts.

Our Expertise

At Dreyfus & Associés, we understand the importance of protecting your intellectual property assets while maintaining your competitiveness in the marketplace. Our services include:

1. Audit and Strategy:
   • Evaluation of trademarks and identification of potential risks.
   • In-depth analysis of grounds for invalidation or revocation.
2. Representation before the INPI and the Courts:
   • Meticulous preparation of case files with convincing evidence.
   • Robust defense in adversarial proceedings.
3. Strategic Monitoring:
   • Monitoring competing trademarks.
   • Early detection of possible conflicts.
4. International Management:
   • Coordinating litigation across multiple jurisdictions.
   • Aligning strategies on a global scale.

Contact us for a personalized consultation and learn how we can support you in all your initiatives.

FAQ

1. What is the difference between invalidation and revocation?

• Invalidation addresses issues at the time of registration (e.g., lack of distinctiveness).
• Revocation addresses abuses or omissions that occur after registration (e.g., non-use, misleading use).

2. What are the deadlines for filing an action?

• There is no time limit for filing an invalidation action.
• A revocation action may be initiated as soon as non-use is established (after 5 years).

3. How much does a procedure before the INPI cost?

• Filing fees are generally moderate, with a base cost of €600 for an invalidation or revocation procedure. Attorney fees are additional.

4. Can I appeal an INPI decision?
   Yes, a decision can be appealed before the Paris Court of Appeal within one month of the notification.
5. Why should I consult an intellectual property expert?
   An expert ensures strategic analysis and thorough case management, significantly increasing your chances of success.

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

v

Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

 v

Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.

Paris Judicial Court, 3rd section, April 5, 2022, 20/12763

Sun Consulting SARL and M. Y W vs H&M Hennes & Mauritz LP et H&M Hennes & Mauritz SARL

In a judgment dated April 5, 2022, the Third Chamber of the Paris Court of Justice ruled on an infringement action between the European Union trademark “CREMIEUX” covering clothing, footwear and apparel products and the trademark “RUE CREMIEUX” under which perfumes are marketed.

In this case, despite the plaintiffs’ argument that stated that clothing and perfumes were similar goods regarding their complementarity and the close connection of their aesthetic function, the Court rejected the infringement action for lack of similarity between these products.

The owner of a trademark may prohibit the use, without their consent of a sign identical or similar to their trademark by a third party. This is to be noted in such circumstances, for example

• when such use occurs in the course of a trade,
• when relating to identical or similar goods and services to those for which the trademark has been registered and
• when there is the possibility for a likelihood of confusion, ie. undermining or initiating liability that could undermine the guarantee of the identity of origin, which is an essential function of the trademark.

Although French and European courts regularly encounter the issue of similarity between perfumes and clothing, uncertainties persist concerning the assessment of this similarity.

Which factors should be used to assess the degree of similarity between goods?

On several occasions, the Court of Justice of the European Union has stated different relevant factors to be used in assessing the degree of similarity between goods or services. The nature, purpose, use, distribution channels, or the competitive or complementary nature of the goods or services concerned, are taken into account.

Nevertheless, if such criteria is lacking, the European Court of Justice admits that a degree of similarity can remain if the goods present a certain aesthetic complementarity.

This complementarity will be retained when three cumulative conditions are fulfilled.

i) One product must be indispensable or important over the use of another.
ii) Consumers must consider the use of the goods together as usual and normal.
iii) Consumers must consider it common place for these goods to be marked under the same trademark.

The Court of Cassation (Supreme Court) adopts a different approach in comparison to that of the Court of Justice, whereby they look at whether the consumer is able to attribute to a common origin the goods and/or services at issue. However, if this interpretation is applied too widely, it could lead to qualifying goods as similar, thereby confirming that a risk of confusion is not altogether impossible or out of the question.

Even though the condition of trademark infringement must be interpreted in light of the risk of confusion, Article 9 of Regulation 2017/1001 states that the concept of similarity is both a necessary condition and an interdependent criteria of the risk of confusion. Therefore, the similarity of goods or services cannot depend on the possibility of a likelihood of confusion as it is the latter that depends in part on the similarity.

Can perfumes and clothing be considered similar goods under these factors?

In the present case, the Third Chamber of the Court of First Instance, considers that clothes and perfumes do not share the same nature or purpose and are not usually sold in the same stores.

Although they may have a similar function of enhancing the wearers appearance, this function is secondary and not convincing.
The primary function of clothing obeys and follows the rules of a purely functional purpose while perfume has for finality, the diffusion or intermingling of a pleasant smell. Therefore, the common use of both clothes and perfume during daily outdoor activities is not sufficient enough to characterize a relevant factor of similarity.

But what about aesthetic complementarity?

The Court found that perfumes were not important or even indispensable for the use of clothing, and that clothing was not important for the use of perfumes either.

This judgment may seem surprising regarding the jurisprudence issued by the Court of Appeal on the similarity between perfumes and clothing.

Indeed, in a decision dated September 23, 2021, the Court of Appeal of Aix-en-Provence had recognized as justified, the opposition to the registration of a trademark filed with the INPI for clothing. This was purely on the basis of an earlier trademark registered for perfumes and cosmetics.

The decision by the Court of Appeal was mainly based on the presence of identical distribution networks.

The Court of Appeal also attributed a significant role to the aesthetic function, which, according to the Court of Justice, cannot be considered as a sufficient factor.

This trend, which aims to make the principle of speciality more flexible, is mainly reflected in the luxury sector where well-known trademarks are very present.

In consideration of this fact, many decisions recognize the similarity between goods in class 3 (perfumes and cosmetics), goods in class 25 (clothing) or even classes 14 (jewellery) and 18 (leather goods).

Indeed, houses such as Louis Vuitton or Maison Margiela offer both clothes for sale and, to conquer a wider audience, perfumes. However, this diversity of products can also be found in non-luxury brands, with different ranges, such as Zara or Lacoste.

In this judgment, the Court of Justice goes against a French jurisprudential trend which qualifies perfumes and clothing as similar. Furthermore, according to the Third Chamber of the Court, the fact that fashion companies market perfumes under their own brand name, cannot be a sufficient factor to make these products similar.

Is it impossible to file an infringement action against a trademark offering perfumes for sale on the basis of an earlier trademark registered for clothing? And is this also the case vice versa?

In retrospect, it must be noted that even though it may not be necessarily so, the decision shows that the chances of success could very well be limited.

Nevertheless, French courts do not yet give a unified and homogeneous answer on this subject and decisions remain casuistic and sophistically cautious.

For example, the Paris Court of Appeal recently ruled in a decision dated September 14, 2022 that there was a risk of confusion between an earlier trademark filed for perfumery and cosmetics and a trademark intended to designate clothing. To determine this similarity, the Court based its decision on the fact that these products belong to the field of fashion, have the same aesthetic function, are targeted at the same clientele and can be marketed under the same trademarks by the same companies and distributed through the same distribution network.

Therefore, we will surely have to wait for the Court of Cassation‘s decision on this matter to obtain a standard and clearer answer in determining and ensuring a more specific and higher level of legal security and protection for trademark owners.

We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.