Cancellation for degeneration
Alongside the action for revocation for non-use is the action for revocation for degeneration: this is one of the possibilities offered to the third party to make a trademark disappear after its registration.
What is brand degeneration?
Introduced by the Law of January 4, 1991, the revocation for degeneration of trademark rights is similar to a popularization of the sign or name of the trademark. A victim of its success, its notoriety is then such that it becomes a word in common use, used indiscriminately by the public to designate the product or service it covers.
The most telling examples are inevitably the best known: Frigidaire, Thermos, Text or Zipper, are all marks affected by degeneration through their use in everyday language. However, the primary function of a brand is to inform the consumer about its origin, a function that is not assumed in these hypotheses. This is why the Intellectual Property Code introduced the action in its Article L714-6, which provides that :
"The owner of a trademark that has become the owner's property shall be encouraged to revoke his rights:
(a) The description customary in the trade of the product or service".
Two cumulative conditions must be met in order for the disqualification to be ordered by the judge:
- The mark must have become the usual designation of the product it refers to.
- It must be "of his own making". Most of the time, a trademark becomes customary through use by the public, not by the owner. It is therefore the owner's passivity that must be questioned, in other words, if the owner has done nothing to prevent his trademark from degenerating.
Fortunately for trademark owners, revocation for degeneration is not automatic and legal action must be brought by an interested third party. If, on the other hand, the revocation is actually pronounced following an attack, the consequences are radical to say the least: all rights to the trademark will be lost for the owner. More concretely, this means that he will no longer be able to defend it in the event that a third party uses it, but also that any communication around the said trademark would benefit all the players present on the same market.
How to fight against the degeneration of a brand?
Passivity on the part of the owner is as much a condition as the fact that a trademark becomes a common name, and that is why measures must be taken throughout the life of a trademark to avoid its degeneration.
- By clearly and systematically indicating that the trademark is actually registered, e.g. by marking it with TM or ®, which have no legal value but a strong symbolic value in the eyes of the public. These mentions may be accompanied by indications mentioning the existence of the trademark and the identity of the owner, affixed to all elements conveying the trademark (packaging or any communication medium).
- By conducting awareness campaigns, during which the owner of a trademark clearly states that it is not a common name.
- By not tolerating any use made by third parties of its own trademark, for example by bringing infringement or unfair competition actions as soon as the case arises.
- If a trademark is nevertheless found in the dictionary of common names, it is imperative to have it specified in the dictionary of common names. that this is indeed a registered trademark.