How is the use of a trademark appreciated under French law? The issue of autonomous subcategories

Introduction

Under French law, serious use of a trademark is a key requirement for maintaining its validity. According to Article L. 714-5 of the Intellectual Property Code, a trademark may be revoked if it has not been used seriously for the goods or services for which it was registered for a continuous period of five years. This requirement ensures that trademarks are not merely reserved without any intention for commercial use, freeing up distinctive signs for other market players.

However, the question arises: Does the use of a trademark in a specific subcategory suffice to maintain its protection for the entire category? This issue introduces the concept of autonomous subcategories, a concept that has been clarified in recent jurisprudence.

Appreciating the use of a trademark under French law

1.1. Definition of serious use

Serious use of a trademark involves real and substantial exploitation on the market, aiming to maintain or create market share for the designated products or services. It is not simply symbolic or internal use within the company. Jurisprudence has clarified that the use must be effective, continuous, and genuinely intended for commercial exploitation of the concerned products or services.

1.2. Means of proving use

The trademark holder may provide evidence of serious use by any means, such as:

• Commercial documents: invoices, purchase orders, distribution contracts.
• Advertising materials: brochures, websites, advertisements.
• Testimonies: statements from business partners or clients.
• Market presence: participation in trade shows, presence in retail outlets.

1.3. Consequences of non-use

If serious use is not demonstrated, the holder risks the revocation of their rights over the trademark for the non-exploited products or services. This revocation can be total or partial, depending on whether the use occurred for the entire range or just part of the products or services.

Autonomous subcategories: A jurisprudential concept

2.1. Definition and identification

An autonomous subcategory is a subdivision within a larger category of products or services that has internal coherence and is perceived as distinct by consumers. For example, within the category of “clothing,” “sportswear“ may constitute an autonomous subcategory if it is seen as such by the public.

2.2. Criteria for distinction

To be considered autonomous, several criteria are taken into account:

• Consumer perception: Is the subcategory recognized as distinct by the public?
• Specific characteristics: Does the subcategory have unique features (design, use, distribution)?
• Commercial autonomy: Does the subcategory have its own marketing and distribution strategy?

2.3. Relevant jurisprudence

The Court of Cassation, in a ruling from May 14, 2025 (n° 23-21.296), reiterated that when the trademark holder proves use only for a specific activity, the judge must verify whether that activity constitutes an autonomous subcategory. If so, the use will only count for this subcategory, and not for the entire broader category.

Risks and impacts of the autonomous subcategories concept

3.1. Risk of partial revocation

The main risk associated with recognizing autonomous subcategories is partial revocation of the trademark. If the holder does not provide proof of serious use for an autonomous subcategory, they risk losing their rights over that subcategory, even if the trademark is used for other products or services within the same category.

3.2. Impact on brand strategy

This concept encourages companies to:

• Precisely define subcategories when registering the trademark.
• Ensure active and continuous use for each subcategory.
• Carefully document the use of the trademark for each subcategory.

3.3. Legal consequences

In case of partial revocation, the holder loses the protection of the trademark for the non-exploited products or services, which could allow competitors to use similar signs for those products or services.

How to avoid revocation for lack of serious use in an autonomous subcategory?

4.1. Preventive strategies

To avoid revocation, it is recommended to:

• Register the trademark for specific subcategories rather than overly broad categories.
• Actively exploit the trademark for each subcategory, ensuring its market presence.
• Collect and maintain proof of use for each subcategory (sales, advertisements, contracts).

4.2. In case of dispute

If an action for revocation is initiated, the holder can:

• Provide proof of use for each concerned subcategory.
• Demonstrate the existence of an autonomous subcategory and justify its use.
• Argue against the relevance of subdividing into autonomous subcategories.

4.3. The role of an industrial property counsel

A specialized professional can assist the company in:

• Assessing risks related to trademark use.
• Drafting product and service classes during registration.
• Developing a usage strategy and documenting the use.

Conclusion

The recognition of autonomous subcategories under French law imposes increased vigilance on trademark holders regarding the exploitation of their rights. It is essential to define subcategories precisely during registration, ensure active use for each, and maintain proof of use. In cases of doubt or dispute, it is strongly advised to consult an industrial property expert to safeguard rights and avoid revocation risks.

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