Trade Mark filing strategy and autonomous sub-categories: Securing your specification and anticipating proof of use

European and French case law now imposes a renewed discipline on trade mark filing. The days when a broad specification was enough to guarantee solid protection are over. Here is a breakdown of the key issues and best practices.

Why case law on sub-categories is changing the game

Filing a trade mark confers an exclusive right. But this right only exists in relation to the specific goods and services designated in the registration. In practice, the value of a trade mark depends as much on the sign itself as on the specification accompanying it.

For several years now, European and French case law has consistently reiterated a straightforward principle: a trade mark must not confer a purely theoretical monopoly over markets that its owner does not actually exploit. This requirement finds very concrete expression in the concept of autonomous sub-categories and in the strengthened control of genuine use.

This context is all the more significant as companies face an increase in oppositions, invalidity actions and counterclaims for revocation, especially where older trade mark portfolios cover very broad specifications.

The specification of goods and services: the trade mark’s true legal perimeter

For a long time, a “broad filing” approach prevailed. Applicants sometimes opted for generic wording or simply reproduced class headings, with the aim of maximising protection without having to anticipate in detail how the trade mark would be used.

Today, however, this strategy entails increased risk. Where a trade mark is registered for a broad category but is only used for part of that category, it may be partially revoked. Protection then remains only for the segments actually used, which can drastically reduce the scope of enforcement.

The legal framework: genuine use, revocation and the burden of proof

French law provides for revocation where a trade mark has not been put to genuine use for five consecutive years. The reference provision is Article L.714-5 of the French Intellectual Property Code, interpreted in line with the applicable European framework, in particular Article 18 of the EU Trade Mark Regulation (EUTMR).

One essential point for businesses: the burden of proof lies with the trade mark owner. In the event of a challenge, it is not for the third party to demonstrate non-use, but for the proprietor to prove genuine, relevant and dated use.

Furthermore, where the specification is broad and divisible, proof must be provided for the relevant sub-categories. This explains why certain portfolios, despite being intensively exploited, are nevertheless weakened.

Understanding autonomous sub-categories: a jurisprudential concept

The concept of an autonomous sub-category does not stem from any express statutory definition. It is a concept developed through case law to reflect economic reality: within a broad category, certain goods or services may form distinct, identifiable and coherent groups.

Case law focuses in particular on criteria relating to the purpose and intended use of the goods and services. What matters is the expected use by the public and the economic function of the product or service, rather than its formal classification.

In practice, an overarching category such as “transport”, “cosmetics” or “software” may cover very different realities. The court may therefore consider that such a category is divisible into autonomous sub-categories and require segmented proof of use.

The European “Ferrari” case law: balancing protection and proportionality

The Ferrari cases (C-720/18 and C-721/18) of 22 October 2020 clarified the CJEU’s reasoning on use in relation to specifications covering categories of varying breadth. The logic is structured around a practical distinction:

• Where a trade mark covers a precise and indivisible category, use in relation to part of that category may be sufficient.
• Conversely, where the category is broad and divisible, use must be proven for each identifiable autonomous sub-category.

This distinction is particularly useful when building a filing strategy. It prompts a simple question: will the category claimed be perceived tomorrow as a “homogeneous whole”, or as a set of distinct segments?

French case law: the Court of Cassation decisions of 14 May 2025

First decision (No. 23-21.296): taxi services and the “transport” category

In a first decision (Cass. com., 14 May 2025, No. 23-21.296), the French Court of Cassation provides a very concrete illustration of the requirement to segment goods and services into sub-categories. The trade marks at issue were registered for “transport” and “passenger transport” services. The proprietor demonstrated genuine use for taxi services, and the Court of Appeal had considered this sufficient.

The Court of Cassation adopted a more demanding approach. It criticised the lower court for failing to assess whether taxi services constituted an autonomous and coherent sub-category within the broader category of transport services. It recalled that such an assessment must be objective and based on the purpose and intended use of the services.

Second decision (No. 23-21.866): cosmetics and essential oils

The second decision rendered on the same day (Cass. com., 14 May 2025, No. 23-21.866) further confirms and refines this requirement. The trade mark was registered for several broad categories of goods, including cosmetics and essential oils. The proprietor relied on use relating to specific products such as textiles impregnated with active substances or composite products incorporating essential oils.

The Court of Cassation overturned the Court of Appeal’s reasoning, criticising it for failing to examine whether those products genuinely corresponded to the goods as registered or whether they constituted autonomous sub-categories requiring specific proof of use.

These decisions confirm that the French Supreme Court now requires a strict alignment between the evidence of use relied upon and the exact scope of the specification.

The court’s power to subdivide the specification

One of the key lessons from recent case law is that the court is not bound by the wording of the specification as drafted. Even if the applicant has not provided for any subdivision, the court may carry out an objective division into autonomous sub-categories where justified by the purpose and intended use of the goods or services.

This power has very tangible effects. A simple and overarching specification may, in litigation, be broken down into multiple segments. The proprietor then faces a heavier evidentiary burden than anticipated.

In practice, this mechanism makes the filing strategy inseparable from the evidentiary strategy. Filing broadly is not merely a legal decision; it is also a documentary, internal and operational decision.

Filing a trade mark: the right level of precision

An effective filing strategy is based on a careful balance. If the specification is too broad, the trade mark may be vulnerable to revocation. If it is too narrow, the trade mark may be insufficient to support commercial development or to act against close competitors.

The question is therefore not whether to file broadly or narrowly, but how to file intelligently, calibrating the specification so that it is both commercially useful and legally defensible in the long term.

Anticipating proof of use: an operational component of trade mark strategy

In practice, the most sensitive issue is proof of use. When a trade mark is challenged, the question is not merely to prove that it is used. It is necessary to prove that it is used for the goods and services covered by the registration, and sometimes for autonomous sub-categories identified in litigation.

For each plausible sub-category, it is recommended to gather specific and segmented evidence:

• Invoices or order forms identifying the type of product or service, with dates and geographical areas.
• Catalogues, brochures, commercial leaflets or archived web pages showing the trade mark associated with the relevant segment.
• Targeted advertising campaigns, announcements or promotional materials, dated and linked to a specific product or service.
• Internal reports by business segment, where their content can be produced and relied upon in litigation.
• Relevant contracts, in particular licences, distribution, maintenance, or evidence showing exploitation by an authorised third party.

Each item of evidence should be preserved within a structured file: not as an undifferentiated mass of documents, but as an organised set by sub-category.

Use by subsidiaries, licensees or distributors

In many corporate groups, trade mark use may be carried out by subsidiaries, distributors or licensees. Case law, in line with Article 18(2) EUTMR, generally accepts that use by an authorised third party may be taken into account, provided that such use takes place with the proprietor’s consent.

This nevertheless requires contractual and documentary organisation. It must be possible to establish the existence of authorisation and to demonstrate the reality of exploitation under the trade mark.

Use in a modified form: securing trade mark variants

Companies rarely use a trade mark in a form identical to the registered version. European and French courts, in line with Article L.714-5(3) of the French Intellectual Property Code and Article 18 EUTMR, accept use in a modified form provided that the modification does not alter the distinctive character of the sign.

As part of a filing strategy, it may therefore be advisable to anticipate certain variants by filing the word trade mark alone or by securing the main versions actually used.

Sub-categories and litigation: impact on opposition, invalidity and competition

The issue of sub-categories is not limited to revocation. It also affects disputes relating to likelihood of confusion, as the similarity of goods and services is assessed with increasing granularity.

For businesses, the key takeaway is that filing strategy must now be read in mirror with litigation strategy. A well-filed trade mark is easier to defend, easier to enforce, and more dissuasive.

Conclusion – Filing today means preparing tomorrow’s defence

Case law on autonomous sub-categories imposes a new discipline in trade mark filing strategy. Filing can no longer be conceived as abstract protection disconnected from actual use. It must be calibrated according to real markets and the evidence the company will be able to produce.

In practice, an effective filing strategy combines three dimensions:

• An intelligently structured specification.
• Anticipation of possible segmentation.
• Proactive organisation of evidence.

This approach transforms the trade mark into a genuinely defensible and sustainable asset, serving the company’s growth and legal security.

FAQ – Frequently Asked Questions on Sub-Categories and Proof of Use

What is an autonomous sub-category in trade mark law?
An autonomous sub-category is a coherent group of goods or services, identifiable within a broader category, based on its purpose and intended use. This concept, developed through European case law (notably the CJEU’s Ferrari rulings) and adopted by the French Court of Cassation, allows the court to segment a trade mark specification and verify that genuine use is demonstrated for each relevant segment.

What is the time limit for demonstrating genuine use of a trade mark in France?
Under Article L.714-5 of the French Intellectual Property Code, the trade mark owner must demonstrate genuine use within five years following registration. After this period, the mark is exposed to a revocation action if no genuine use can be proven.

Who bears the burden of proving use?
It is the trade mark owner who must prove genuine use when challenged, not the third party initiating the revocation action. This rule follows from the principle that it would be disproportionate to require the applicant to prove a negative fact (non-use).

My trade mark is used by a licensee: does that count as genuine use?
Yes, case law accepts that use by an authorised third party (licensee, subsidiary, distributor) may constitute genuine use, provided it takes place with the proprietor’s consent and the mark continues to fulfil its essential function of guaranteeing origin. However, this must be properly documented (licence agreement, distribution agreement, group policy).

Can I use my trade mark in a slightly different form from the registered version?
Yes, both French and European law accept use in a modified form, provided the modification does not alter the distinctive character of the sign. However, substantial visual or conceptual changes may prevent recognition of use of the registered mark. It may be prudent to also register the main variants in use.

How should I organise my proof of use in practice?
It is recommended to build a structured file for each sub-category of goods or services, including dated invoices, catalogues, advertising materials, website screenshots, internal reports by business segment, and licence or distribution agreements. Each item should be dated, geographically located, and linked to a specific product or service.

Is an overly broad specification automatically vulnerable?
Not necessarily, but the risks are increased. If the mark is registered for a broad and divisible category, the court may subdivide that category into autonomous sub-categories and require segmented proof of use. If the proprietor only exploits part of the category and cannot document use for the other segments, the mark may be partially revoked.

What is the difference between the Nice Classification and autonomous sub-categories?
The Nice Classification is an international administrative tool that organises goods and services into 45 classes. Autonomous sub-categories are a jurisprudential concept based on economic and functional logic. The French Court of Cassation has expressly stated that the Nice Classification is merely an indication and does not bind the court in its analysis of genuine use.

This article is based on the contribution of Dreyfus & Associés to the “Trade Marks & Copyright 2026” Practice Guide published by Chambers and Partners.

For any questions regarding your trade mark filing strategy or the organisation of your proof of use, contact us: contact@dreyfus.fr