When a company registers a French or European Union trademark, the registered sign remains fixed. It cannot be altered subsequently, unless a new application is filed. In practice, a sign registered at a given point in time may need to evolve in line with the company’s communications strategy and be used in a modified form, particularly due to marketing and promotional requirements for the goods and services to which it applies. The legislation has taken these practical constraints into account when the trademark owner is required to demonstrate that said trademark is in use by providing evidence of use.
Indeed, in the context of administrative or judicial proceedings (opposition, cancellations actions, invalidity actions, infringement proceedings), the trademark owner, whether as defendant or claimant, may be required to prove genuine and substantial use of the trademark over the last five years. The question raised is whether the evidence of use provided must correspond exactly to the sign as registered.
The legislation in force addresses this issue.
► Article 18 of the European Union Trade Mark Regulation (EUTMR) provides:
“1. If, within a period of five years following registration, the owner has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use.
The following shall also constitute use within the meaning of the first subparagraph:
a)use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the owner; (…)”
► Article L714-5 of the French Intellectual Property Code provides:
“The owner of a trademark shall be liable to forfeiture of their rights if, without due cause, they have not made genuine use of the trademark in relation to the goods or services for which it is registered for an uninterrupted period of five years. The starting point of this period shall be set, at the earliest, as the date of registration of the trademark, in accordance with the procedures laid down by a decree of the Council of State.
The following shall be deemed to constitute use within the meaning of the first paragraph:
(…)
3° The use of the trademark, by the owner or with their consent, in a modified form which does not alter its distinctive character, whether or not the trademark is registered in the owner’s name in the form used;”
It is therefore not necessary to prove that the sign used is strictly identical to the registered sign. A degree of flexibility is allowed where the registered sign is used with variations that do not alter its distinctive character. Such variations may take the form of omissions, additions, substitutions, use of colour, etc.
The assessment of the alteration of the distinctive character is always carried out on a case-by-case basis. To this end, in 2020 the European Union Intellectual Property Network (EUIPN) issued a Common Communication applicable to both French law and European Union law concerning the use of a trade mark in a form differing from the one registered. This Communication sets out a roadmap comprising the following two stages:
STEP 1: Assessment of the sign as registered:
The first step is to establish which elements contribute to the distinctive character of the sign as registered. In the case of a sign consisting of a single element, it is the sign itself that carries its distinctive character. In the case of a sign consisting of several elements, this assessment requires an analysis of the distinctive and visually dominant character of its elements, based on the intrinsic qualities of each and their relative position within the arrangement of the sign, as well as their interactions.
STEP 2: Assessment of the differences in the sign as used and the effect of the changes:
Once those elements that contribute to the distinctive character of the sign as registered have been identified and the degree of their distinctiveness determined, it should be established whether they are present and/or modified in the sign as used, in a direct comparison of the two signs. At this point, an assessment of the added, omitted or modified elements should be made, based on the intrinsic qualities and the relative position of the various elements within the arrangement of the sign, and their interactions. The overall impression produced by the signs must also be taken into account.
As regards the effect of changes, account must be taken of the greater or lesser degree of distinctive character of the sign as registered. In general, signs of an average degree of distinctiveness, will be less influenced by changes. Conversely, signs of a low distinctive character are, in general, more prone to an alteration of their distinctive character.
Here are some examples from case law in which the relevant Office was required to rule on whether or not the sign, as used, resulted in an alteration of the distinctive character of the sign as registered.
Case law of the European Union Trade Mark Office (EUIPO)
Use that does not impair the distinctive character of the registered sign
Use impairing the distinctive character of the registered sign
Case law of the National Institute of Industrial Property (NIIP)
Use that does not impair the distinctive character of the registered sign
Use impairing the distinctive character of the registered sign
Lavoix is at your disposition to assist you in assessing whether the use made of your trade mark constitutes an acceptable variation of its registered form and therefore supports a claim of genuine use.