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Introduction
When a trademark filing covers an overly broad range of goods or services, and the owner is required to demonstrate its genuine use, the trademark may be subject to revocation for non-use. The French Supreme Court (Cour de cassation) decision of May, 14 2025 confirms a strict and demanding approach in this regard.
Legal framework: applicable law and case law
Article L.714-5 of the French Intellectual Property Code and EU directives
According to Article L. 714-5 of the French Intellectual Property Code, where the proprietor has not made genuine use of the trademark, without legitimate reason, for an uninterrupted period of five years starting at the earliest from the date of registration, the mark shall be liable to revocation. These provisions must be interpreted consistently with Directive 2008/95/EC.
The burden of proving genuine use lies entirely with the trademark owner.
The Ferrari doctrine: clarification regarding broad categories of goods and services
In the Ferrari decisions (C-720/18 & C-721/18), the ECJ drew an important distinction between two scenarios:
- If the trademark covers a precise and indivisible category of goods and services, use in relation to part of that category may suffice to establish genuine use.
- If the category is broad and divisible, the owner must prove genuine use for each autonomous sub-category. To identify an autonomous subcategory of goods or services, the ECJ held that the decisive criteria are the purpose and intended use of the goods or services concerned. In practice, this means that the use of the mark must be clearly linked to the goods or services for which it has been registered.
The core difficulty: subdividing a broad category
When a trademark is registered under an overarching designation (e.g., “transport,” “cosmetics,” “cleaning products”), the judge must assess whether this category can be objectively divided into coherent and autonomous sub-categories based on their function or purpose.
For further insight on how assessing genuine for autonomous subcategories of goods and services, please refer to our earlier article on this topic.
In many cases, applicants do not specify such subdivisions. However, the judge is not bound by this omission: he may itself define the sub-categories where this is objectively justified. Consequently, the owner must prove genuine use for each identified sub-category, even if not explicitly stated in the initial wording of the registration.
Case study: the French Supreme Court decision of May 14, 2025 on “transport / passenger transport”
Facts
In the G7 case, the Groupe Rousselet owned the trademarks “G-7” and “G7,” both registered in Class 39 for “transport / passengers transport”. Several companies (G7 Savoie, G7 Bourgogne, G7 Tractions) operated in refrigerated freight transport using “G7” as part of their company name.
Following an action for trademark infringement and unfair competition brought by Groupe Rousselet, these companies counterclaimed for revocation of the trademarks for non-use. The Court of appeal rejected the revocation claim, and the companies appealed to the French Supreme Court.
Analysis and legal implications
In its decision of May 14, 2025 decision, the French Supreme Court adopted a strict approach to revocation for non-use. It held that the Court of appeal erred in finding genuine use of the “G7” and “G-7” trademarks solely in connection with taxi services, without determining whether such services constituted an autonomous and coherent sub-category within the broader category of “transport / passenger transport.”
Referring to the Ferrari case law, the Court reaffirmed that judges must, even on their own initiative, determine objectively and non-arbitrarily whether a registered category can be divided into distinct sub-categories.
This analysis must rely primarily on the purpose or intended use of the services, without being limited to the Nice Classification, which is only an indicative reference and administrative guideline. Consequently, the Court found that “proof of use limited to taxi transport services cannot justify maintaining protection for all transport services”.
By this decision, the French Supreme Court confirmed its alignment with European case law, imposing stricter scrutiny of genuine use. The ruling reinforces that trademark protection must remain proportionate to the actual use demonstrated, preventing overly broad registrations from granting unjustified monopolies that would unduly restrict competitors’ freedom to operate.
Strategic recommendations regarding evidentiary requirements
For each relevant sub-category, the trademark owner must gather specific documentation such as invoices by service type, brochures, targeted advertisements, internal reports by business segment, and where applicable, licence or maintenance agreements, spare-part offers, or after-sales service evidence. Each piece of evidence must be dated and directly linked to the relevant goods or services designated in the registration.
It is often advisable to limit the scope of protection at the time of filing or, at the very least, to anticipate and plan actual or intended use within specific divisions of goods or services.
Conclusion
When a trademark filing covers a wide category of goods or services, proving genuine use requires a meticulous and methodical approach: use must be demonstrated for each autonomous sub-category defined according to purpose and intended use. The French Supreme Court’s decision of May, 14 2025 heightens this standard for trademark owners with broad portfolios. A word of caution: insufficient evidence may expose your trademark to partial or total revocation.
Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.
Nathalie Dreyfus with the support of the entire Dreyfus team
FAQ
1. What is genuine use of a trademark?
Genuine use means real, continuous, and non-symbolic exploitation aimed at maintaining or developing market share for the goods or services designated in the trademark registration.
2. How can applicants limit the risk when filing a trademark application?
Avoid excessively broad specifications and favour precise, realistic descriptions that reflect the actual or planned commercial use.
3. What happens if the owner fails to prove use for certain sub-categories?
The trademark risks partial revocation: protection will remain only for the goods or services actually used. This rule prevents unjustified monopolisation of unused market segments.
4. Can use by a licensee or subsidiary be taken into account?
Yes. Use by a licensee, distributor, or subsidiary can be recognised as genuine use, if carried out with the trademark owner’s consent and maintains the trademark’s essential function of indicating commercial origin.
5. What if the trademark is used in a slightly modified form?
Use of a variant of the trademark is acceptable if the modifications do not alter its distinctive character. However, substantial visual or conceptual alterations may disqualify the use as genuine.