Using and defending your brand: rights, obligations and risks

Congratulations, your trademark is registered! This is a major step towards securing an essential asset for your company. However, the registration certificate is not a trophy to be simply framed and forgotten. Owning a trademark involves active responsibility for maintaining its legal force and commercial value. The real work starts now: using it correctly, ensuring that it retains its distinctive power and defending it against potential infringement. Neglecting these aspects can lead to the outright loss of your rights. Let's explore these obligations and defence strategies together.

Genuine use: a vital condition for your brand

A fundamental principle governs the life of a registered trademark: it must be used. The law does not like unexploited monopolies. The idea behind this requirement, set out in article L.714-5 of the French Intellectual Property Code (CPI), is to ensure that the trademark register is not cluttered with unused signs that would unnecessarily block new creations. This is known as theserious use.

But what exactly do we mean by "serious use"? It does not mean symbolic or purely internal use within the company. The law and case law are clear: the use must be real and effective on the marketfor the goods or services specifically designated at the time of registration. It must be consistent with the essential function of the trademark, i.e. to guarantee the identity of origin of the goods or services in the eyes of consumers. In practical terms, this means :

• Affixing the brand to the products themselves or their packaging.
• Its use in sales-related commercial documents (invoices, order forms, customer catalogues).
• Its presence in advertising and promotional material aimed at consumers for the products/services concerned.
• Its operation via a commercial website where the products/services under the brand are actually offered for sale.

Use by a third party with your consent, typically a licensee, is also considered valid use for the purposes of maintaining your rights. On the other hand, purely internal use, on administrative documents, or an anecdotal presence on a few advertising objects with no direct link to actual marketing would generally not be sufficient. The assessment is made on a case-by-case basis, but the idea is to demonstrate a genuine desire to win or maintain market share under this brand.

The knife falls after an uninterrupted period of five years period of non-genuine use, generally calculated from the date of registration of the trademark. If, for five consecutive years, you have not made serious use of your trademark for all or some of the goods or services in question, any interested third party (a competitor, for example) may apply to the courts or to the INPI to have your trademark revoked. forfeiture of your rights for this unused part. You would then lose your monopoly on the trade mark for the activities concerned. Imagine losing the protection of your name after years, simply for lack of demonstrable exploitation!

There are indeed "just reasons" for non-use that can excuse a lack of exploitation (for example, a temporary regulatory ban on marketing the product). However, these grounds are interpreted strictly and do not cover simple commercial difficulties or a lack of success. The rule is therefore clear: a trademark must live on the market to retain its legal force.

Maintaining the distinctive character of your brand over time

Beyond usage, there is another challenge facing brands, especially those that are highly successful: the risk of degeneration. This is the insidious phenomenon whereby a trademark, by being used as the very name of the product or service it designates, loses its distinctive character and becomes a generic term in the public mind. Think of "Frigidaire", "Kleenex", "Caddie", "Sopalin", "Scotch"... all of which were originally registered trademarks!

When this happens, the brand no longer fulfils its primary function as an indicator of origin. The term becomes synonymous with the product itself, regardless of the company that manufactures it. The legal consequences can be formidable: the disqualification for degeneration (article L.714-6 of the CPI), resulting in the loss of the exclusive right to the sign, which then falls into the public domain to designate this type of product.

How does this happen? Often through a combination of popular success and the passivity of the brand owner. If you let the media, your competitors and even your own marketing teams use your brand as a common name without reacting, you are contributing to its trivialisation.

To avoid this deadly trap for your intangible assets, active vigilance is essential:

• Monitor the use of your brand: By third parties (press, competitors, distributors) but also internally. Systematically correct incorrect usage.
• Use your brand correctly: Use it as an adjective that qualifies a generic product ("an X brand fridge", not "an X"), not as a noun. Use the symbols ® (for registered trademark) or ™ (for unregistered or pending trademark) to remind you of its status.
• Educate your environment: Inform your partners, the press and the public that your term is a registered trademark and not a common name.
• Ask for corrections : If your trademark is used as a generic term in a dictionary or encyclopaedia, article L.713-3-4 of the CPI gives you the right to demand a statement indicating that it is a registered trademark.
• Take legal action against clearly generic uses by competitors that could weaken your brand.

Another, rarer risk is that the brand may become disappointing over time. If, for example, your brand evokes a characteristic (a geographical origin, a key ingredient) that is no longer true for the product as it is marketed, it could be considered misleading and also incur a revocation.

Defending your brand against attacks

Own a property right in a trademark gives you the power to take action against those who use it without your authorisation. This is what is at stake in the defence against counterfeiting.

Trademark infringement, defined in Articles L.713-2 and L.713-3 of the IPC, covers several situations:

• La identical reproduction of your trademark for goods or services identical to those you have registered. This is the simplest case.
• L'imitation of your trademark (use of a similar sign) for identical or similar goods or services, if it creates a risk of confusion in the public mind. This is the most common case and the most complex to assess.  
• L'affixing of the infringing trademark on products or their packaging.
• L'offering, selling, holding with a view to salethe import or export of counterfeit trademarked products.
• L'use of the sign in the course of trade, including as a company name or in advertising, if it creates a likelihood of confusion.

Le risk of confusion is therefore the central criterion when the signs or goods/services are not strictly identical. How is it assessed? You have to look at it from the point of view of the average consumer, who is normally attentive. The judge will compare the signs overall (visual, phonetic and intellectual similarities), the similarity of the goods/services, and will take into account the reputation of the earlier trademark. If there is a risk of consumers being misled as to the origin of the goods, or believing that there is an economic link between the two companies, infringement by imitation may be upheld. For example, using "COCA-KOLA" for a soft drink would create an obvious likelihood of confusion with "COCA-COLA".

But your rights are not automatically exercised. It is up to you, the trademark owner, to be vigilant and to monitor the market to detect potentially infringing uses. This includes monitoring the registration of new trademarks by third parties, domain names, social networks, online marketplaces, trade fairs, etc. Monitoring tools and services exist to help you do this.

What should you do if you suspect a breach?

Do you suspect that a third party is using your brand without authorisation? It's essential to react thoughtfully and strategically.

1. Gather evidence: First and foremost, document the infringement. Keep evidence of the disputed use (dated screenshots, purchases of test products, photos, catalogues, advertising, etc.).
2. Analyse the situation: Is this an infringement in the legal sense? Is there a proven risk of confusion? Is the use really harmful? The help of a lawyer is often invaluable at this stage in assessing the strength of your position.
3. Formal notice : In many cases, a reasoned letter of formal notice sent by a lawyer is enough to put an end to the infringement. This is an amicable approach that can avoid long and costly legal proceedings. It shows your determination to defend your rights.
4. Infringement seizure : If you are considering taking legal action and you lack evidence about the extent of the infringement (quantities sold, origin of the products, etc.), you can ask the judge to authorise a seizure for infringement (article L.716-7 of the IPC). This is a surprise procedure, carried out by a bailiff, who enters the premises of the alleged infringer to establish the facts and seize documents or samples. It is a highly effective but technical tool.
5. Infringement proceedings : If amicable settlement fails, the solution is to take legal action before the appropriate court (specialised courts exist in France). The aim will be to obtain from the judge :
   • A ban on further infringement, often subject to a fine (a financial penalty for each day's delay).
   • Destruction of counterfeit products.
   • The award of damages to compensate for the loss suffered (loss of sales, damage to brand image, profits made by the infringer, etc.).
   • Publication of the judgment.

There is also a criminal route for the most serious cases of counterfeiting, but civil action is the one most commonly used by companies.

Defending your brand is an ongoing process that requires vigilance and responsiveness. A well-defined strategy, combining monitoring and graduated actions, is the best way to preserve the value and integrity of your brand, and to optimise its performance. valuation.

Is your brand being properly used and defended? Inadequate use or surveillance can be costly in terms of lost rights and litigation. Contact our firm for an audit of your practices and to work together to define an appropriate strategy. an effective and proportionate defence strategy.

Sources

• Code de la Propriété Intellectuelle (CPI), in particular articles L.713-2, L.713-3, L.714-5, L.714-6, L.716-1, L.716-4, L.716-4-2, L.716-7, L.713-3-4.
• Regulation (EU) 2017/1001 on the European Union trade mark, in particular Articles 9, 18, 51.