Introduction

Cancellation and revocation proceedings can remove all or part of an existing trademark registration, but they address different defects and operate at different stages in the life of the trademark. Invalidity challenges whether the trademark should ever have been registered. Revocation concerns events arising after registration, primarily the absence of genuine use.

Should the trademark be declared invalid or revoked?

Invalidity challenges the original validity of the registration

An invalidity application argues that the trademark should not have been registered. It may rely on absolute grounds, which relate to the intrinsic characteristics of the sign, or relative grounds, which arise from a conflict with an earlier right.

Absolute grounds may include:

  • lack of distinctive character;
  • an exclusively descriptive or customary sign;
  • a deceptive trademark;
  • a sign contrary to public policy;
  • bad faith at the filing date.

Any natural or legal person may rely on an absolute ground without owning an earlier right. Relative invalidity, however, may be requested only by the owner or authorised beneficiary of the right relied upon, such as an earlier trademark, corporate name, trade name, domain name or other protected sign.

Invalidity may be total or limited to certain goods and services. Where it is granted, its effect is generally retroactive: for the affected goods or services, the registration is treated as though it had never produced legal effects.

Revocation addresses events occurring after registration

Revocation does not challenge the trademark’s validity at the filing date. It sanctions circumstances that arose during the life of the registration.

The most common ground is the absence of genuine use of the trademark for an uninterrupted period of five years. Revocation may also be sought where the trademark has become the customary name for the relevant goods or services, or where the way in which it is used has become misleading.

Any person may apply for revocation. In non-use proceedings, the trademark owner bears the burden of proving genuine use for the contested goods and services. Evidence may take any form, but it must allow the authority to assess the commercial reality of the use as a whole.

Revocation normally takes effect on the filing date of the application, although an earlier date may be selected where the ground for revocation had already arisen.

Should the application be filed with the INPI or the judicial court?

The INPI has primary jurisdiction over standalone applications

Since April 1, 2020, most standalone invalidity and revocation applications against French trademarks have fallen within the jurisdiction of the INPI. The proceedings are conducted electronically through online portal.

The INPI may consider invalidity based on absolute grounds; relative invalidity falling within the statutory scope of its jurisdiction; revocation for non-use; revocation based on a trademark becoming generic or misleading.

Its jurisdiction covers French trademarks and international registrations designating France. An EU trademark must be challenged before the EUIPO rather than the INPI.

The judicial court retains jurisdiction over connected disputes

The Judicial Court remains competent where invalidity or revocation is raised:

  • as a counterclaim in trademark infringement proceedings;
  • in connection with another claim already pending before the court;
  • on the basis of an earlier right outside the INPI’s administrative jurisdiction;
  • in certain cases where evidentiary or interim measures have already been initiated.

A general relationship between two disputes is not sufficient. The claims must be closely connected and involve the same parties.

How to prepare an admissible and persuasive application?

An application cannot merely identify a registration and refer to a broad legal ground. It should specify:

  • the contested trademark and its owner;
  • the relevant goods and services;
  • every legal ground relied upon;
  • the earlier rights asserted;
  • the facts establishing the alleged defect or conflict;
  • the precise scope of the requested sanction.

The applicant’s arguments, claims and evidence must be organised in a single, structured statement. Although some formal defects may be remedied, the possibility of correction should never be used as a substitute for proper preparation. The workshop identified a correlation between the absence of professional representation and the increase in inadmissible applications.

Where both invalidity and revocation are sought against the same registration, two separate applications must be filed.

Invalidity and revocation proceedings before the INPI

The proceedings begin with an electronic filing. Once admissibility has been reviewed, the trademark owner generally has two months to submit a response. Further adversarial exchanges may follow within the limits set by the procedural rules. An oral hearing may be arranged at a party’s request or on the INPI’s initiative.

Since July 2, 2026, the statutory period within which the INPI must issue its decision after the investigation phase closes has increased from three to four months, including for proceedings already pending on that date. This period must be distinguished from the overall duration of the case, which includes written submissions and any suspension.

Official fees, recoverable costs and appeals

The official filing fee is EUR 600, with an additional EUR 150 for each earlier right relied upon beyond the first. Each party normally bears its own expenses, but a party may request that the INPI order its opponent to contribute to certain procedural costs.

The INPI addresses costs in 55% of its decisions and grants at least part of the requested amount in 68% of cases where costs are claimed. Where bad faith is established, the Institute may award the maximum available amount.

The decision is recorded in the French National Trademark Register and may be challenged before the territorially competent Court of Appeal. Any appeal strategy should therefore be assessed immediately after notification, based on the reasoning adopted and the arguments and evidence already submitted.

Conclusion

Trademark invalidity and revocation proceedings are now central tools for managing, clearing and defending trademark portfolios. Their accessibility should not obscure their technical nature. The legal ground, jurisdiction, scope of the earlier rights and quality of the supporting evidence must all be assessed before proceedings are initiated.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

What is the difference between invalidity and revocation?

Invalidity addresses a defect existing when the trademark was filed. Revocation concerns a later event, such as the absence of genuine use for five years. Invalidity generally has retroactive effect, whereas revocation normally takes effect from the filing date of the revocation application or from an established earlier date.

Who must prove genuine use?

In non-use revocation proceedings, the contested trademark owner bears the burden of proving genuine use. The evidence must establish real, public and external commercial use for the relevant goods and services.

Can an INPI decision be appealed?

Yes. INPI decisions on invalidity and revocation applications may be challenged before the competent Court of Appeal. The applicable time limit and procedural requirements should be reviewed immediately upon notification.

Can a trade mark be invalidated or revoked only in respect of certain goods or services?

Yes. Invalidity and revocation may concern only part of the goods and services covered by the registration where the ground relied upon does not affect all of them in the same way.

What happens to licence agreements or assignments relating to a trademark that has been declared invalid?

Since invalidity takes effect retroactively, it retrospectively undermines all legal transactions entered into in reliance on the trademark. The parties may, however, depending on the circumstances, invoke the doctrine of apparent right or the general rules of contract law governing termination and restitution.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.