What is the obligation to use the trademark?

There is a legal obligation to use one's trademark.. The monopoly enjoyed by the trade mark proprietor must indeed be justified. Thus, if the trademark is not used for too long, the owner may lose his rights. Forfeiture may be total or partial. It will depend on the use of the trademark. If there is no longer use of the trademark, the judges consider it abandoned. It must be struck off the trademark register. If it is still used only for certain goods and services of its wording, there will be partial revocation.

Article L.714-5 of the IPC provides for the forfeiture of trademark rights for lack of serious use, for an uninterrupted period of five years. To avoid losing one's rights, it is therefore necessary to make a serious use of the trademark.

Forfeiture for non-use of the mark

Any interested person may seek revocation of the trademark in the courts. Most often, the revocation will be requested by a competitor, who wants to be able to freely use the trademark, or even appropriate it.

No use of the trademark for five years

The trademark must not have been used for a period of 5 years. This means that after filing, the proprietor has a fairly long period of time before starting his activity. You can therefore register a trademark even if you do not yet have the means to start marketing the products concerned.

Likewise, an uninterrupted period of time is required to establish the non-use of the mark. If you do not use the trademark for 2 or 3 years, it is always possible to resume exploitation. In this way, you avoid revocation.

Total or partial forfeiture of the rights to the mark

The mark may be subject to partial revocation. Indeed, the revocation sanctions non-use in each country concerned. Thus, an international trademark may be partially cancelled. If there is use in a State, the mark remains valid in that territory.

Likewise, only those goods designated in the mark and which are not exploited may be forfeited. The judges will then shorten the wording of the trademark, so that they include only the goods actually used.

The different ways of using the trademark

Use as a trademark

The use of the mark must make it possible to identify the origin of the goods and services determined. Exploitation of the sign as a trade name or company name shall not be sufficient to characterize use as a mark. Similarly, mere administrative acts (renewal of the mark, signing of a licensing agreement or assignment of the mark) do not constitute use of the mark. They therefore do not make it possible to rule out the risk of revocation.

Use for the goods and services covered by the deposit

The use shall be valid only for the goods and services referred to in the deposit. This means that use of the mark for non-targeted goods, even if similar, will have no effect. Worse, this misuse may weaken the trademark! It is therefore fundamental to write a wording that corresponds to your actual activity.

Contact with the public

Valid use requires that products and services are effectively brought into contact with the target audience. This is not the case where the mark appears only on advertising documents or brochures.

Seriousness of the use of the mark

There must be real and effective exploitation of the brand. The judges accept preparations for the launch of the brand, provided that the launch is imminent. The use of the trademark must be regular and not only punctual.

In addition, the judges verify that the use is proportionate to the company's activities. They often refer to the habits and customs in the sector of activity concerned to assess this criterion.

In any case, use of the trademark must result from positive intervention by the owner.

In short, to avoid a lapse for non-use of your trademark, you have to be very careful, from the moment you register your trademark. ! You must in particular: use the trademark as registered, but also and above all, make use of the goods and services mentioned in the wording. If you are not able to do this yourself, you can also entrust the exploitation of your trademark to a third party, by means of a licence agreement.