Is the trademark “GRAND LITIER” distinctive for bedding products in Class 20? The INPI delivered its decision (NL 23‑0161) in December 2024 in a nullity action brought against this French trademark.
This decision appears particularly interesting to us, as it not only recalls the criteria for assessing the distinctive AND descriptive character of a trademark, but also highlights an important means of defending a trademark, namely distinctiveness acquired through use.
Reminder of the facts
French trademark No. 09/3701645 “GRAND LITIER” has been filed and registered since 29 December 2009 in the name of the company FIRST SERVICE.
On 14 August 2023, the company MEDIA MARKETING CONSEIL initiated a nullity action against said trademark for part of the goods and services, in particular in Classes 20 (beds), 24 (bed linen) and 35 (advertising; business management).
This action was based on the following two grounds:
- The contested trademark may serve to designate a characteristic of the product or service (descriptive character);
- The contested trademark lacks inherent distinctiveness (absence of distinctive character).
The INPI first examined the descriptive character, considering that the contested trademark was descriptive only for part of the contested goods and services, namely:
“beds, pillows, bedding (excluding bed linen), mattresses, bed bases, mattress protectors, mattress toppers, bed frames, bed legs, sofa beds.”
The INPI then examined the distinctive character and reproached MEDIA MARKETING CONSEIL for failing to make any distinction between the ground of descriptiveness and the ground of lack of distinctiveness. The Office therefore rejected the second ground.
Furthermore, in order to defend its trademark, FIRST SERVICE succeeded in convincing the INPI that its trademark had acquired a distinctive character through use prior to the date of the nullity application. The registration of the trademark was therefore entirely maintained by the INPI.
Below are some points that we believe are important in assessing the distinctive AND descriptive character of a trademark, presented in a question-and-answer format.
1. What is the relationship between the ground of inherent lack of distinctiveness (a) and the ground of descriptiveness (b) of a trademark? How does the INPI proceed with its examination when both grounds are invoked simultaneously?
Both grounds were invoked by MEDIA MARKETING CONSEIL. The INPI chose to examine descriptiveness first (ground b), since a descriptive trademark (ground b) is necessarily devoid of distinctive character (ground a).
Nevertheless, if a trademark is not descriptive (ground b) of the goods or services concerned, it may still be challenged for lack of distinctive character insofar as it “does not lead the relevant public to believe that the products in question originate from a specific undertaking and does not enable it to distinguish them from those of other undertakings”.
However, in its arguments, MEDIA MARKETING CONSEIL made no distinction between the two grounds for nullity. This led the INPI to reject the ground of lack of distinctive character.
Thus, it is important to clarify the relationship and the distinction between the distinctive and descriptive character of a trademark in order to better prepare actions.
2. Must a term considered “descriptive” necessarily be listed in a dictionary?
No! In order to defend its trademark, FIRST SERVICE had emphasized that the term “LITIER” was not defined in an official dictionary.
However, since the evidence submitted by MEDIA MARKETING CONSEIL clearly showed that this term was used to “designate a person or a company carrying out a craft activity relating to the manufacture … of bedding products”, the INPI held that the absence of a dictionary definition did not prevent the term from being considered descriptive.
3. Must a trademark considered descriptive necessarily describe an essential characteristic of the goods or services concerned?
No! The law provides that:
May not be validly registered and, if registered, may be declared invalid:
[…]
3° A trademark consisting exclusively of signs or indications which may serve, in trade, to designate a characteristic of the product or service, in particular the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service;
[…]
Thus, the condition relating to an essential characteristic does not apply to the assessment of the descriptive character of a trademark.
4. What is the reference period for assessing the inherent distinctive character of a trademark?
In the context of a nullity action, the assessment of the inherent distinctive character of the contested trademark must be made as of the filing date of the trademark.
The parties are therefore required to demonstrate whether or not the contested trademark was distinctive on the filing date.
It is interesting to note that evidence dated after this date is not systematically excluded from the examination; such evidence may indeed “be taken into account if and insofar as it allows conclusions to be drawn regarding the situation” at the relevant reference date.
5. How can distinctiveness acquired through use be proven? What evidence is relevant to demonstrate it?
The trademark “GRAND LITIER” was able to escape invalidity thanks to its distinctiveness acquired through use, but not due to its inherent distinctiveness.
In this case, the INPI recalled that “proof of such acquisition may be provided by any means and must in particular make it possible to determine the market share held by the trademark, the intensity, geographical extent and duration of use of the trademark, the importance of the investments made by the undertaking to promote it, and the proportion of the relevant public which identifies the product or service as originating from a specific undertaking thanks to the trademark.”
By way of example, the following documents and information are useful to prove distinctiveness acquired through use:
- Documents and information concerning the evolution of the trademark’s market shares in France;
- The trademark’s ranking in the relevant sector, as well as awards and prizes received;
- Information regarding the deployment of stores and points of sale in France;
- Product catalogues/brochures;
- Advertising dissemination (physical or digital, including on social media): advertising posters; magazines; press articles; television, radio and social media advertising; …
- Invoices relating to advertising campaigns; advertising contracts;
- Evolution of turnover: distribution agreements; sales invoices; purchase orders; …
6. If the distinctive character of the contested trademark is acquired through use, from when must such use have begun in order to be relied upon against a nullity action?
The spirit of this rule is “not to declare a registered trademark invalid where the distinctive character has been acquired after its registration”.
Thus, unlike the answer to Question 4, the assessment of distinctiveness acquired through use of a contested trademark must be made as of the date of the nullity application.
If the contested trademark was not considered distinctive on the filing date, namely 29 December 2009, it had become distinctive by the date of the nullity application, namely 24 August 2023 (almost 12 years later), thanks to its intensive use since registration.
By Qiang CEN, 28 October 2025