The decision issued by the Versailles Court of Appeal on last March 5 offers an opportunity to recall what constitutes genuine use of a trademark and what qualifies as proper reasons for non-use.
The PARFUMS LANSELLE Decision
In this decision, the judge rejected the appeal filed by the company France excellence, owner of the French trademark PARFUMS LANSELLE, against the decision of the French IP Office (INPI) dated June 27, 2023, which had declared the total revocation of the trademark for lack of use.
The facts begin with the filing of the international trademark LANSELLE in 2022 by the company Fragantis, which notably designates France. This company files a revocation action for non-use against the trademark PARFUMS LANSELLE, to which France excellence responds by filing an opposition against the French portion of the international trademark LANSELLE. The INPI declares the revocation of the trademark PARFUMS LANSELLE for all the designated goods, and the company France excellence therefore appealed before the Versailles Court of Appeal.
One of the arguments raised by this company was that the commercialization of the products was imminent at the time the revocation action was filed, but that proper reasons justified the lack of market launch (i.e., the niche market targeted by the products—casino and gaming club clientele—the nature of the product requiring a long development time, and the Covid-19 pandemic).
The company France excellence also cited preparatory actions, such as the search for vintage bottles and posters for the creation of a “showroom,” promotional actions to promote a dedicated product corner, participation in trade shows, and operation of a website presenting the upcoming products.
However, the Court found these elements insufficient to establish genuine use, as there had been no actual availability to the public and thus no product commercialization. The Court also rejected the arguments put forward regarding proper reasons for non-use, as they were not sufficiently proven.
As we can see, in practice it is not always easy to prove use of one’s trademark or the reasons justifying its non-use in order to avoid revocation.
What constitutes genuine use of a trademark?
The elements to be gathered must, taken as a whole, demonstrate use of the trademark within the five-year period preceding the revocation request, not necessarily continuously. These elements must show:
- The trademark in question;
- Use as a trademark and not, for example, as a company name;
- Use in connection with the goods or services designated by the trademark;
- A date falling within the relevant period;
- Commercial use of the product or service (e.g., invoices, purchase orders, etc.);
This use may originate from the trademark holder or an authorized third party (e.g., a licensee).
It is important to remember that the nature of the product or service will be taken into account, as genuine use of a trademark does not necessarily mean a high sales volume. Indeed, expectations differ between proving use of a trademark for everyday consumer products—like a supermarket shampoo—and proving use for luxury watches, for example.
What constitutes proper reasons for non-use of a trademark?
These reasons are circumstances beyond the control of the holder (or authorized third party) that constitute an obstacle to the use of the trademark.
Proper reasons are assessed on a case-by-case basis and in a relatively strict manner.
According to INPI Guidelines, it is not necessary for the use of the trademark to be made impossible. It may suffice that use is unreasonable under the circumstances.
A typical example of a proper reason is the wait for marketing authorization (MA) for a medicinal product. Force majeure may also constitute a valid reason. However, financial difficulties of a company are not considered valid, as they are not deemed beyond the control of the trademark holder.
What happens if a proper reason for non-use is recognized? The holder is not exempted from proving use of the trademark, but the non-use during the period has the effect of suspending the five-year period. Thus, the period during which non-use is justified is not taken into account when calculating the five-year grace period.
To conclude, we emphasize the importance of retaining all documents likely to demonstrate use of the trademark, whether they are accounting records or advertising and promotional materials. This will make it much easier to compile the body of evidence and to include older materials rather than relying solely on recent documents.
by Mathilde ESCUDIER, May 15, 2025