Nathalie Dreyfus

Introduction

With the rise of online shopping, not only are buying habits changing, but so are methods of fraud. Return fraud, which involves sending back a counterfeit item instead of an authentic product, is now one of the most serious types of fraud.

This mechanism introduces counterfeits directly into legal distribution channels and undermines the integrity of inventories. As a result, companies can no longer rely on simple visual checks: sustainable trademark protection requires enhanced traceability and authentication tools, in line with best practices recommended by French and European authorities.

How return fraud works?

Return fraud is based on a simple but discreet strategy. The fraudster orders a genuine product, keeps the original, and returns a carefully reproduced imitation. This type of fraud thrives due to several factors:

• Very permissive return policies on e-commerce platforms,
• Increasing sophistication of counterfeits,
• Logistical pressure linked to large volumes,
• Lack of thorough checks upon receipt.

In warehouses, processing times are short and teams do not always have the expertise to identify high-quality fakes.

Why is return fraud rising in e-commerce?

Historically, counterfeit goods entered the market through parallel channels. Today, return fraud creates an internal entry point: counterfeit goods enter directly through the trademark‘s official channel. As a result:

• Warehouses receive counterfeits without their knowledge;
• Some counterfeits perfectly imitate the characteristics of the authentic product;
• Counterfeits may be mistakenly shipped to other consumers.

This confusion blurs the lines between authentic and counterfeit, complicating overall control of the supply chain.

Legal, financial, and reputational impacts

Return fraud has three major consequences:

1. An immediate financial cost

The company loses the original item and is left with a counterfeit that cannot be sold. On a large scale, the losses add up.

2. Significant reputational risk

If a counterfeit item is accidentally returned to a customer, trust is eroded, which can lead to complaints, doubts about quality, and damage to the company’s image.

3. Significant legal consequences

The presence of counterfeits in the supply chain complicates infringement actions, as the break in traceability alters the evidence. This raises questions about civil liability, as well as the company’s ability to enforce its intellectual property rights.

Strengthening authentication and traceability

To limit this risk, companies must adopt enhanced technical mechanisms:

• Unique digital identifiers for each item,
• Discreet markings applied during manufacturing,
• Authentication technologies integrated into the product,
• Digital tracking of the item’s life cycle until its eventual return.

Internal procedures must allow for rapid and confidential verification of authenticity upon receipt.

A sustainable protection strategy

Return fraud evolves with online commerce practices. Companies must therefore secure the entire chain:

• Production,
• Transport,
• Distribution,
• Returns.

But the strategy must also be based on:

• Robust internal procedures,
• Regular updates to the legal framework,
• Ongoing training for teams,
• Constant risk analysis to anticipate new methods.

Conclusion

Return fraud is now a major challenge for businesses. It is essential to implement robust authentication systems and strengthen return controls. Companies that invest in these measures protect their reputation, the value of their assets, and public trust in the long term.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is return fraud?
The purchase of an authentic product followed by the return of a counterfeit or different product.

2. Why is this phenomenon rising?
Due to flexible return policies, the increasing quality of counterfeits, and the rise in return volumes.

3. What are the risks for businesses?
Risk of financial loss, damage to reputation, and legal difficulties related to the presence of counterfeits in the supply chain.

4. How can you protect yourself?
Through unique identifiers, authentication technologies, digital tracking, and strict internal procedures.

5. Is it possible to completely eliminate return fraud?
No, but consistent measures can greatly reduce the risk.

Introduction

Creating a trademark, whether a name and/or a logo, is often a pivotal moment in the development of a business. However, before initiating a formal filing with the French IP Office (INPI) or any comparable authority, it is essential to verify that the proposed sign is available and does not conflict with earlier rights. This is precisely the purpose of a prior art search: an essential step to anticipate legal risks, safeguard your investments, and build a sustainable trademark strategy.

What Is a trademark prior art search?

Filing a trademark grants, under trademark law, an exclusive right to use the sign for specific goods and services.

However, such registration requires that the chosen sign be distinctive and available: it must not infringe any pre-existing rights (trademarks, company names, trade names, business names, domain names, etc.).

A prior art search is therefore the preliminary verification used to identify such earlier rights before filing.

Several types of searches may be necessary:

• Exact-match search: identifies signs that are strictly identical (same spelling, same logo, same classes of goods/services) to the one you intend to file.
• Similarity search (phonetic, visual, conceptual): a deeper examination to detect signs that are close enough to trigger a likelihood of confusion. This level is particularly critical for assessing risks of opposition, invalidity, or infringement.

Thus, the absence of identical trademarks is not sufficient: similarity must also be assessed to identify potential risks.

How to conduct an effective prior art search?

Recommended tools and databases

To perform a thorough search, it is advisable to use:

• The INPI “Marques” database for French trademarks.
• The EUIPO database for EU trademarks and the WIPO database for international trademarks.
• Professional services (IP attorneys, law firms) when a similarity analysis is required.

Relying solely on a general-purpose search engine is strongly discouraged.

Legal analysis: beyond simple automated searches

A truly useful prior art search requires professional legal analysis:

• Assessment of the likelihood of confusion based on phonetic, visual or conceptual criteria, and the perception of the relevant public.
• Examination of the goods and services covered, in accordance with the principle of specialty.
• Consideration of other rights beyond trademarks: company names, trade names, domain names, business names, etc.
• Verification of the actual use of the earlier sign (reputation, age, geographical scope), which may affect the assessment of the risk.

This work demands legal expertise, making the involvement of an IP attorney or trademark attorney highly advisable.

When and by whom should the search be conducted?

• When?: Before any filing. It should be carried out as soon as the name, trade name, domain name, or logo is being conceived.
• By whom?: The applicant may perform preliminary checks, but a professional (IP attorney or specialist lawyer) is strongly recommended for a reliable, risk-based interpretation.

Legal and strategic implications of a prior art search

Securing registration and avoiding opposition or invalidation

Without a prior search, filing a trademark may lead to:

• Opposition by the holder of earlier rights after publication,
• Invalidation proceedings years after registration if the trademark is deemed too similar to an earlier sign,
• Infringement proceedings if the trademark is used commercially.

For instance, in the Huella case of May 7, 2025, the application for a trademark covering leather goods (Class 18) was refused due to the presence of an earlier trademark protected for cosmetics (Class 3). More details can be found on this case in our previously published article.

Thus, a prior art search is the first line of defence in securing the validity and long-term enforceability of your trademark.

Protecting investments and trademark reputation

Trademark development often involves substantial investments: branding, marketing, packaging, communication, digital presence, etc.

A conflict arising after launch may result in refusal of registration, forced withdrawal, or a complete rebrand, each carrying significant financial, logistical and reputational consequences.

A prior art search protects the business against these risks by providing a stable and secure framework from the outset.

Structuring a strategic trademark portfolio

Beyond a simple verification exercise, a prior art search helps to build a smart filing strategy. The applicant is advised to:

• Identify priority or defensive classes based on current or future activities,
• Adjust the sign (spelling, logo, wording) to maximise distinctiveness,
• Consider complementary filings (domain names, trade names, company names) to strengthen market presence,
• Prepare for future monitoring to detect potentially conflicting new filings.

A comprehensive search is therefore not merely a compliance measure but a genuine strategic tool for managing intangible assets.

Conclusion

A prior art search is the cornerstone of any effective trademark protection strategy. It allows businesses to anticipate legal risks (opposition, invalidity, infringement), safeguard investments, establish a strong trademark reputation, and develop a coherent trademark portfolio. Neglecting this step exposes the company to significant financial and reputational consequences that can be difficult to remedy.

We strongly encourage every entrepreneur, start-up, and established company to incorporate this process into their trademark development strategy, ideally with the support of an experienced professional.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. Is a prior art search legally required before filing a trademark?

No. It is not a statutory requirement, but it is essential in practice because it determines whether earlier rights could block registration or restrict the use of your trademark.

2. Why is a simple Google search insufficient to verify availability?

Many earlier rights are not visible through search engines. Only official databases (INPI, EUIPO, WIPO, domain name registries) reveal registered rights, and only legal analysis can assess the likelihood of confusion.

3. Should I check only trademarks, or also domain names and company names?

A complete search should include domain names, company names, trade names and business names, as these rights can also be invoked, especially when they are well-known.

4. Does a prior art search guarantee the absence of future conflicts?

It significantly reduces the risk but cannot provide absolute certainty. New filings may still arise after the search, which is why ongoing monitoring is recommended.

5. Does a prior art search guarantee that my trademark will be registered?

No search can guarantee registration. The outcome depends on the applicant’s strategic choices, the behaviour of holders of earlier rights and subsequent filings. A combined strategy (search + filing + monitoring) provides the highest level of security.

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.

Introduction

The protection of figurative trademarks occupies a central place in intellectual property strategies, particularly in an environment where imagery, form, and graphic codes are decisive vectors for identifying products and services. Yet the registration of such signs remains complex due to the strict requirements set by European Union law and recent case law. Companies seeking robust protection must anticipate obstacles relating to distinctiveness, graphic originality, and consumer perception.

This article outlines the key legal criteria, the risk of refusal, and practical strategies to optimize the protection of figurative trademarks.

Legal foundations of figurative trademark protection

A figurative trademark encompasses any non-verbal sign composed of graphic elements: logos, icons, stylized drawings, shapes, lines, or visual combinations. Under both French law and European Union law, such signs must be distinctive, non-descriptive, and capable of identifying the commercial origin of the goods or services.

Legislation requires that the sign be perceived immediately by the consumer as an indication of origin, and not as a simple decorative motif or ordinary shape. This requirement is set out in Article L.711-2 of the French Intellectual Property Code and Article 7(1)(b) EUTMR.

Industrial property offices consistently refuse signs considered banal, even when applicants rely on actual commercial use or marketing strategy. The logic remains constant: a trademark does not protect a graphic idea but a form that is immediately perceived as distinctive.

Distinctiveness criteria applicable to shapes and graphic elements

The central question is whether the figurative sign contains sufficiently marked characteristics to allow the consumer to memorise it without particular effort. This does not require a high level of artistic creativity, but the sign must be capable of standing apart from the common stock of shapes.

Where the graphic element approaches a simple geometric shape (circle, square, rectangle, line, pentagon), there is a high risk of refusal. Case law adds that minor variations (slight waviness, tilt, rounding) are not sufficient to compensate for a lack of distinctiveness.

For example, in a decision dated November 13, 2024 (TUE, November 13, 2024, case 426/23 Chiquita Brands v. EUIPO), the General Court of the European Union ruled that a simple yellow and blue oval was comparable to a basic geometric shape and therefore not eligible for trademark protection. This approach is particularly strict, as the offices and courts consider that these signs do not convey any identifiable commercial message.

This requirement applies irrespective of the relevant public. Even if that public has a higher level of attention, as in technological or professional sectors, case law reiterates that the degree of attention has no impact on the threshold of distinctiveness.

Key lessons from recent case law: the Rigo Trading decision

The judgment delivered by the General Court of the European Union on 16 July 2025 (Case T-215/24, Rigo Trading SA v. EUIPO) constitutes a major development.

Facts and procedure

The Luxembourg company Rigo Trading SA designated the European Union for the international registration of a purely figurative sign representing a slightly wavy rectangle, intended to distinguish a wide range of goods.

The EUIPO examiner refused registration on the ground that the sign had no distinctive character within the meaning of Article 7(1)(b) EUTMR, considering that it amounted to a minor variation of a basic geometric shape. The Fifth Board of Appeal upheld that decision, prompting the company to bring the matter before the General Court.

Before the Court, Rigo Trading argued, in particular, that the EUIPO had incorrectly defined the relevant public and that the sign could not, in reality, be assimilated to a simple geometric figure.

Findings of the General Court

The General Court dismissed the action, confirming that the sign did not allow consumers to identify the commercial origin of the goods. It emphasised that the level of attention of the consumer, whether average or specialised, has no impact on the assessment of distinctiveness.

The Court found that:

• The contested sign is very close to a simple geometric figure
• The slight waviness is not sufficient to constitute a substantial variation
• The absence of additional graphic elements (combination, complexity, stylisation) prevents the sign from meeting the minimum threshold required
• The simplicity of the sign prevents immediate memorisation by the public

The ruling reinforces a long-established trend: overly simple or minimalist signs (rectangles, lines, stylised circles, regular hexagons) fail to be registered unless distinctiveness acquired through use is proven.

An interesting point: the same sign had been accepted by the Benelux Office, highlighting divergences between European offices. However, the Court confirmed that EU law prevails for any registration targeting the European Union.

Best practices for securing a figurative trademark

To maximise the chances of registration, it is advisable to:

• Integrate distinctive graphic elements: visual rhythm, asymmetry, original contours
• Avoid simple or geometric shapes, especially when the aim is to protect packaging or motifs
• Reinforce the stylisation of the logo to increase memorability
• Demonstrate intensive use of the sign through structured marketing evidence when necessary
• Systematically analyse recent EUIPO refusals to adjust the graphic strategy

Conclusion

The protection of figurative trademarks requires both a strategic and technical approach. Ensuring strong figurative trademark protection involves more than aesthetic analysis: it relies on a precise understanding of distinctiveness as assessed by trademark offices. Companies must therefore anticipate obstacles linked to graphic simplicity, strengthen stylisation, and closely monitor recent case law.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. How can distinctiveness acquired through use be proven?

By providing evidence demonstrating that the public associates the sign with your company: sales data, advertising campaigns, surveys, press coverage, market share, or any proof of effective recognition.

2. Can a figurative trademark protect packaging?

Yes, provided the packaging has sufficiently original visual features to be perceived as an indicator of origin rather than a decorative or functional element.

3. Do European offices assess distinctiveness in the same way?

No. Although EU law sets a common framework, assessments differ between national offices. The EUIPO generally applies a stricter approach, particularly regarding simple shapes.

4. How can a logo that is too simple be strengthened before filing?

By adding distinctive graphic elements: asymmetry, combinations of shapes, original lines, stylistic effects, or integrating a verbal element to distance the sign from basic geometry.

5. How can a refusal before the EUIPO be avoided?

By anticipating the distinctiveness assessment, avoiding minimalist signs, preparing an evidence-of-use strategy if needed, and conducting a legal evaluation of the sign prior to filing. Reinforcing stylisation greatly increases the chances of registration.

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.

Introduction

In an environment where creative content circulates faster than ever, determining the owner of a copyright-protected work remains a key legal issue for businesses, creators, and all innovation stakeholders. French law follows a particularly protective regime, grounded on the primacy of the author, strict requirements for copyright assignments, and narrowly framed exceptions, especially for employees, external service providers, collaborative works, and software.

Please find bellow the essential rules governing copyright ownership and transfer in France, together with best contractual practices to ensure secure exploitation of a work.

Who is the author and initial rights holder of a work?

Fundamental principle: the author is always the natural person who created the work

The French Intellectual Property Code (“IPC”) is unequivocal: the author is the creator of the work, regardless of status or function. The author holds:

• Moral rights, perpetual, inalienable, and imprescriptible (Art. L121-1 IPC);
• Economic rights, transferable and exploitable under contract (Art. L122-1 et seq. IPC).

Presumption of authorship: the person whose name appears on the work

When a work is disclosed under a particular name, that person is presumed to be the author, unless proven otherwise. This presumption is central in disputes relating to the origin of a creation.

Orphan works: a specific regime

If no author can be identified, the work is considered an orphan work, and it remains protected. Its use is strictly limited to cultural, educational or research purposes, excluding commercial exploitation.

Works created by employees, contractors, or public officials: who owns the rights?

Employees: no “work for hire” doctrine under French law

Contrary to common-law systems, French law does not recognise automatic transfers of copyright to employers.

Even when created within the scope of employment, the employee remains:

• The author, and
• The initial owner of economic rights.

To exploit the work, the employer must obtain a written copyright assignment, compliant with Articles L131-1 et seq. IPC.

The software exception

Software is subject to a major exception under article L113-9 IPC: the employer automatically acquires economic rights when the software is created:

• In the course of the employee’s duties, or
• According to the employer’s instructions.

This rule strongly protects technology companies.

Public officials: a regime governed by the intellectual property code

Public officials are subject to a specific copyright regime, set out in Articles L131-3-1 and L111-1 of the French Intellectual Property Code. As a general rule, the public official remains the author and the initial rights holder, but the administration may exploit works created in the performance of the official’s duties or in accordance with instructions received, to the extent necessary for the fulfilment of the public service mission. Any exploitation exceeding this purpose requires the express authorisation of the author, together with appropriate remuneration.

Teachers-researchers, however, constitute a notable exception: owing to their academic freedom, they retain full control over the exploitation of their works, even when created in the course of their duties. This framework seeks to balance the protection owed to the author with the operational needs of the public service.

Independent Contractors: Assignment Required

The rule is clear: a contractor remains the author and owner of the work unless a written assignment is executed in favour of the commissioning party.

Without such an assignment, the work cannot legally be exploited, even if fully paid for.

Works with multiple authors: collaboration, derivative works and collective works

Collaborative works: joint ownership

A work created by several individuals is a collaborative work under Articles L113-2 (para. 1) and L113-3 IPC.

Co-authors jointly own the rights, and any exploitation requires their mutual consent.

Derivative works: authorisation required

When a work derives from a pre-existing work (adaptation, transformation, remix of a protected work), the author of the derivative work must obtain the right holder’s authorization, pursuant to article L113-4 IPC, which governs composite works.

Collective works: a specific ownership regime

Article L113-2 (para. 3) IPC defines a collective work as a creation developed at the initiative of a natural or legal person who publishes and discloses it under their name and assumes editorial responsibility, with the individual contributions merged into an inseparable whole.

This regime frequently applies to:

• Press publications,
• Content created by creative agencies,
• Websites and digital platforms,
• Editorial and institutional materials.

A work qualifies as collective when three cumulative criteria are met:

1. A decisive initiative and overall control by the commissioning entity, exercising genuine editorial oversight;
2. Integration of individual contributions into a unified whole, with no separable rights;
3. Disclosure under the commissioning entity’s name, appearing as the sole project owner.

Where these conditions are fulfilled, the legal entity is the original owner of the economic rights, eliminating the need to obtain individual assignments from contributors.

Assignment and licensing: how can copyright be transferred or exploited?

Copyright assignment: strict formal requirements

A valid assignment must:

• Be in writing;
• Specify each transferred right (reproduction, representation, adaptation, etc.);
• Detail the territory, duration, and media;
• Include proportional or fixed remuneration compliant with the ipc.

General formulas such as “all rights assigned” are invalid.

Licences: a flexible alternative

A licence authorises use without transferring ownership. It must be:

• Limited in duration (perpetual licences are void),
• Clear, with ambiguities interpreted in favour of the author.

Certain licences are statutory (library lending, private copying, educational uses) and involve mandatory remuneration.

No registration requirement

France requires no administrative formalities to recognise assignments or licences.
However, maintaining records is strongly recommended for evidentiary purposes.

Duration of protection and contractual safeguards

Standard duration: 70 years post mortem

Economic rights expire 70 years after the author’s death.

For collective, anonymous, or pseudonymous works, protection lasts 70 years from 1 January following the year of publication (Art. L123-3 IPC).

Best contractual practices

We systematically recommend:

• Signing contracts before delivery of the work;
• Drafting by distinct rights (reproduction, adaptation, etc.);
• Precise identification of the work and all versions;
• Verifying the chain of title (employees, contractors, subcontractors);
• Including warranties against eviction and infringement.

A frequent example: a company commissioning a website without an assignment is legally unable to modify its design or entrust maintenance to a third party.

Conclusion

Determining the ownership of a copyright-protected work in France requires balancing author protection, contractual precision, and narrowly framed legal exceptions. Legal certainty depends on a deep understanding of IPC mechanisms and carefully drafted contracts.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can an author assign copyright before the work is even created?
Yes, but only under strict conditions. French case law prohibits broad assignments of future works unless the scope or type of works is sufficiently defined. Production agreements (video games, audiovisual works, commissioned creations) often rely on this framework.

2. How can authorship or prior creation be proved in case of a dispute?
Evidence may include Soleau envelopes (INPI), blockchain timestamps, bailiff reports, digital archives, dated project files, or emails. No formalities are required, but reliable proof of date is essential.

3. Can an employer prevent an employee from reusing a work created during employment?
Yes, if the employee has assigned the economic rights under the IPC. Without a written assignment, the employer has no exploitation rights.

4. Who owns the rights in a work published under a pseudonym?
The person identified as author upon disclosure benefits from a presumption of authorship.

5. Can a licence be granted without a duration limit?
No. Perpetual licences are void under French law.

6. Can AI be considered an author?
No. Only a human being can be recognised as an author under the IPC.

This publication is intended to provide general guidance to the public and highlight certain issues. It is not intended to apply to specific situations or constitute legal advice

Introduction

On May 21, 2025, the General Court of the European Union  upheld the partial revocation of the EU trademark Airbnb for “advertising” services in class 35.

This decision highlights an essential distinction: promoting one’s own services does not constitute advertising within the meaning of trademark law.

The case illustrates the importance of genuine and distinctive use of registered trademarks and encourages proprietors to adapt their filing strategies to the actual nature of their business activities.

The partial revocation request concerning the Airbnb trademark

Airbnb, Inc., which owns a European Union trademark since 2013 and which covers advertising services in class 35, was subject to a revocation request filed in 2020 by the Australian company Airtasker Pty Ltd on the grounds of lack of genuine use within the European Union.

The EUIPO Cancellation Division partially upheld the request for revocation.

Following an appeal filed by Airbnb, the EUIPO Board of Appeal confirmed the revocation for class 35, finding that the evidence provided (promotional materials, marketing campaigns, website excerpts) related exclusively to the company’s internal activities and not to the provision of advertising services to third parties.

Airbnb then appealed to the General Court of the European Union, challenging the interpretation that advertising must necessarily be understood as a service provided to third parties.

The position of the General Court of the European Union

The General Court dismissed Airbnb’s appeal and upheld the partial revocation of the trademark for advertising services.

Based on established case law, the Court recalls that advertising services are intended to assist other companies in promoting their goods or services, or to strengthen their competitive position on the market through commercial communication.

Thus, advertising carried out solely for one’s own internal purposes, even if extensive and widely disseminated, cannot be regarded as an advertising service provided to third parties, which is the type of service covered by Class 35 under the Nice Classification.

The evidence of use submitted by Airbnb demonstrated only the promotion of its own accommodation offers and commercial activities, without establishing any advertising services carried out on behalf of other companies or individuals.

The Court further specified that promoting the accommodation offered by hosts on the platform does not constitute an independent advertising activity.

Such promotion is primarily intended to increase the visibility and profitability of the platform itself, rather than to provide a distinct advertising service.

The use of the Airbnb trademark in this context cannot therefore be regarded as genuine use for advertising services.

Key takeaways for trademark owners

This decision reiterates a fundamental rule of trademark law: for use to qualify as genuine, it must correspond to the precise nature of the services designated.

• Avoid unnecessarily overprotecting a trademark

Filing a mark in classes that have no direct connection with the owner’s actual business activities, as was the case here with Class 35 for advertising services, exposes the registration to medium-term risks of revocation

• Promoting one’s own products does not constitute an advertising service

A company’s internal or self-focused communication, even on a large scale, is not sufficient to demonstrate genuine use for advertising services. Only services rendered to third parties (e.g., agencies, consultants, platforms providing visibility to others) fall within this category.

• The importance of a coherent filing strategy

Before filing, it is essential to identify accurately the relevant classes in light of the proprietor’s real economic activities. For digital businesses in particular, distinguishing between core activities and ancillary services is crucial.

Conclusion

In its judgment of May 21, 2025 (Case T-1032/23, Airbnb, Inc. v. EUIPO), the General Court of the European Union clearly reiterates that genuine use of a trademark requires exploitation consistent with the services for which it has been registered.

Trademark owners must therefore ensure that their filings accurately reflect the nature of their services, otherwise, they risk partial or even total revocation of their rights.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

Q&A

1. What types of services are covered under Class 35?

Class 35 of the Nice Classification covers advertising, business management, and retail services, among others.

2. Why is it risky to register a trademark in classes that do not correspond to the owner’s actual business activities ?

Overly broad filings increase the risk of revocation: if the proprietor cannot demonstrate genuine use in a given class, their rights may be partially or fully cancelled. Moreover, an incoherent filing strategy can trigger unnecessary disputes and raise the overall cost of maintaining the trademark portfolio.

3. Can an overly narrow trademark filing also create issues?

Yes. An excessively limited specification may prevent a business from achieving adequate protection as its activities evolve. A trademark should be protected in a proportionate manner: if the filing is too broad, it risks revocation; if too narrow, it may fail to shield the owner from imitators

4. How can a business anticipate and mitigate the risk of revocation within its trademark portfolio?

By implementing regular monitoring of actual use, maintaining dated evidence, conducting internal audits every two to three years, and adjusting filings when business activities evolve. This proactive approach helps prevent future challenges.

5. What types of evidence are generally accepted to prove genuine use of a trademark within the European Union?

The evidence must demonstrate real, public, outward-facing, and commercial use of the mark for the goods or services for which it is registered. This may include invoices, contracts, advertisements directed at the public, sales evidence, marketing materials, audience metrics, or commercial partnerships. Purely internal documents are insufficient.

Introduction

The administrative cancellation procedure has been available before the INPI since April 1, 2020, thanks to the PACTE Law of May 22, 2019. After five years, this procedure has proven highly successful. Bad faith in the filing of a trademark is one of the most frequently invoked absolute grounds for cancellation before the INPI. The rise of parasitic strategies, increased competitive tensions, and the consolidated case law from the CJEU have prompted companies to examine what this concept actually entails.

In this article, we provide a comprehensive guide to understanding and identifying bad faith in a trademark application, in order to determine under which conditions a nullity action can be brought before the INPI.

Understanding the concept of bad faith in trademark law

Legal definition and foundations

Article L.711-2 11° of the French Intellectual Property Code provides that a trademark filed in bad faith cannot be validly registered. If it is nevertheless registered, it may be declared null.
More specifically, the prohibition of bad faith targets any filing made with an intention contrary to honest commercial practices, whether to harm a competitor, unduly monopolize a sign, or divert the essential function of indicating origin.

Presumption of good faith and burden of proof

Under Article 2274 of the French Civil Code, good faith is always presumed. The burden of proof lies with the claimant seeking nullity, who must provide relevant and consistent evidence. This evidence must be dated, contextualized, and allow assessment of the applicant’s intention at the time of filing.

Identifying bad faith in a trademark application

Fraudulent behaviors targeting a specific third party

This category covers situations in which the applicant knew of prior use and filed with the intention of harming the third party’s interests, for example:

• Filing a sign used by a former business partner, employee, or distributor

In the Secretum decision of April 15, 2025 (NL24-0093), a commercial partnership existed between the claimant and the owner of the contested trademark. The claimant had created a wine trademark specifically for the owner, with a contract explicitly stating that the trademark remained the claimant’s property. Despite this clause, the owner filed an identical trademark, reproducing both the term and the calligraphy.

• Intent to improperly benefit from the reputation of the sign

For example, in a July 3, 2023 decision (NL23-000) regarding the trademark “” (or “BANDE DE FILS DE SNAP”) the INPI considered that the trademark exploited the notoriety of the signs “SNAPCHAT” and “”. The contested trademark was filed with the intent to create an association in the public’s mind and profit from the reputation and success of the existing application.

• Coincidence of the end of a contractual relationship and a targeted filing

In the HYGROTOP decision of February 23, 2022 (NL21-0167), the claimant had ended commercial relations with the company distributing and installing its products. On the same day, the managing director of the distributing company filed the claimant’s name as a trademark.

Filings diverting the essential function of a trademark

Some fraudulent filings do not target a specific third party but aim to obtain an unjustified monopoly, for example:

• Filing to prevent a revocation action

In the Pomone decision of March 27, 2025 (NL23-0276), the claimant requested that the owner of preexisting POMONE marks (filed in 2017 and registered for more than five years) provide proofs of use, according to the rules controlling use of older marks. Less than three weeks after this request, the owner filed the contested trademark to strengthen its position in negotiations regarding the purchase of the marks.

• Filing a work in the public domain

In the Pompon decision of September 13, 2024 (NL23-0183), the trademark «POMPON», filed by a museum shop operator, was challenged by Dixit Arte SAS. The claimant argued that the registration aimed to monopolize the name «Pompon», associated with sculptor François Pompon, whose works are in the public domain.

For more information on this matter, please refer to our previously published article.

Factual indicators considered by the INPI

The assessment is global and depends on multiple factors, such as:

Chronology of events (often decisive), e.g., in Drag Race France, April 26, 2023 (NL22-0205), the contested trademark was filed simultaneously with the announcement of the show’s arrival in France by the claimant.

Attempts to monetize the filing, e.g., in Google, August 30, 2021 (NL21-0055), the owner of the contested marks offered to modify the project in exchange for compensation, indicating a “wait for a monetary proposal.”

Other factors include:

• Prior relations between the parties;
• Notoriety of the prior sign;
• A clearly parasitic strategy of multiple filings.

Conversely, the INPI rejects bad faith when a filing aims to strengthen preexisting rights or involves a real and legitimate exploitation project.

Bad faith as a procedural tool before the INPI: the example of forfeiture through acquiescence

Article L.716-2-8 of the French Intellectual Property Code provides that the holder of an earlier right who tolerated the use of a later-registered trademark for five consecutive years cannot request nullity of that later trademark. This is known as forfeiture through acquiescence.

However, the article makes an exception: nullity is still possible if the registration was filed in bad faith. This serves as a powerful lever when the prior right holder discovers an abusive filing late.

In the recent LOCPLUS decision of December 14, 2023 (NL21-0255), the issue was examined, showing the strictness required to overturn forfeiture. In that case, although bad faith was invoked to bypass forfeiture, the argument was rejected due to insufficient evidence.

Conclusion

Cancellation of a trademark for bad faith in INPI proceedings is a decisive legal mechanism to combat parasitic strategies. Rigorous assessment of bad faith strengthens the legal certainty for economic actors.

In an environment of increasing trademark conflicts, understanding this absolute ground for cancellation is essential to protect intangible assets and anticipate litigation risks.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. Can the INPI raise bad faith ex officio during examination of a trademark application
No. The INPI cannot raise bad faith on its own; it can only be invoked by a third party in a nullity action.

2. Is likelihood of confusion required to prove bad faith?
No. Bad faith sanctions a fraudulent intention, independent of confusion analysis.

3. Can a company file a name it plans to commercialize later?
Yes, provided there is a genuine and fair intention to use it, not as part of a fraudulent strategy to block a competitor.

4. Can multiple filings indicate bad faith?
Yes, if they reveal a systematic strategy to capture signs used by third parties.

5. Can bad faith exist without targeting a third party?
Yes, for example, when the filing diverts the essential function of a trademark.

This publication provides general guidance and highlights key issues. It is not intended for specific cases nor to constitute legal advice.

Introduction

The publication by the INPI of its analysis of the first five years of cancellation and revocation procedures trademarks an important step in the evolution of trademark litigation in France. For the first time, the Office provides a comprehensive and documented overview of how these procedures, introduced by the Ordinance of November 13, 2019, and accessible since April 2020, actually work.

This report, published in the INPI’s Journal du droit, highlights how these administrative mechanisms have become a key tool in trade mark protection and litigation strategies. It outlines the profile of users, the legal grounds most frequently invoked, and the way the INPI applies the provisions of the Intellectual Property Code.

An administrative procedure that has become essential

Since their entry into force on April 1, 2020, applications for cancellation and revocation, provided for in Articles L. 714-3 and L. 714-5 of the Intellectual Property Code, have significantly transformed trademark litigation.

They offer several advantages:

• direct access, without going through a court;
• controlled costs, limiting the financial uncertainties of legal proceedings;
• decisions accessible in the INPI’s official legal database.
• a clear procedural framework, allowing for better anticipation.

The first decision issued in November 2020 confirmed the INPI’s ability to handle disputes previously reserved for specialized courts. Since then, companies, particularly SMEs, have actively used these procedures to protect their trademarks or challenge those of competitors.

A volume of decisions that is reshaping the landscape

In five years, the INPI has received approximately 2,200 applications and issued more than 1,800 decisions, a stable volume demonstrating widespread adoption by businesses and practitioners.

Breakdown of applications:

• 60% cancellation actions;
• 40% revocation actions.

These figures show two main uses:

• challenging the validity of a trademark upon filing
• sanctioning the absence of genuine use.

The analysis also highlights the strong involvement of SMEs and micro-enterprises, which represent more than one-third of applicants and defendants. The mechanism therefore achieves the accessibility objective set by the legislator.

The presence of a lawyer or patent attorney in over 90% of cases confirms that, despite its accessibility, the procedure remains legally demanding.

The legal grounds most commonly invoked the INPI

Relative grounds dominate cancellation actions :

Nearly 70% of cancellation requests are based on prior rights (Articles L. 711-3 et seq. of the CPI).

The INPI regularly recognizes the similarity or likelihood of confusion between signs, which explains the high success rate of this type of action.

Absolute grounds remain decisive :

Approximately 20% of actions invoke absolute grounds such as:

• lack of distinctiveness,
• descriptive character,
• violation of public policy,
• bad faith at the time of filing.

Bad faith, which was previously mainly examined by the courts, now plays an essential role before the INPI. It is invoked in more than 20% of cases and upheld in a significant proportion of them.

Revocation : lack of use as the main argument :

Lack of genuine use remains the main basis for revocation proceedings. The INPI notes that lack of commercial exploitation continues to be the easiest objective ground to document. Around 30 decisions also dealt with the degeneration or misleading nature of trademarks, which are rarer but important situations for certain sectors.

Duration, effectiveness, and observed trends

The average duration of proceedings is 8.5 months, which can extend to 17 months in the event of a hearing.

Nearly 30% of proceedings are closed without a decision on the merits (withdrawal, regularization, amicable agreement), which demonstrates the strategic use of proceedings as a bargaining chip.

Success rates are high:

• 85% of actions based on prior rights are successful in whole or in part;
• 74% of revocation actions are fully justified;
• More than 1,000 trademarks have been canceled or revoked since 2020.

Decisions often include an order to pay costs, with an average amount of €680, reinforcing the need for a solid strategy before initiating proceedings.

Practical issues for trademark owners

The publication of the analysis highlights several essential reflexes:

• regularly check the strength of registered trademarks;
• systematically keep evidence of use, which is essential in the event of a dispute;
• monitor competing filings to quickly detect conflicts using the tools provided by the INPI;
• factor the risk of cancellation into naming and branding decisions;
• prepare precise, documented, and structured arguments to maximize the chances of success.

To support these efforts, companies can rely on several useful resources:

• Journal de droit (analysis of decisions), INPI
• Légifrance for the applicable legal framework,
• The CNIL when evidence is based on online or time-stamped data.

Conclusion

The analysis published by the INPI confirms the key role played by cancellation and revocation proceedings in protecting trademarks in France. Their effectiveness, the diversity of the parties that use them, and their high success rate now make them an essential tool. For companies, the challenge is to adopt an active, proactive, and documented approach to managing their intellectual property in order to secure their intangible assets in the long term.

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.

Dreyfus & Associés works in partnership with a global network of attorneys specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire Dreyfus team

FAQ

1. What is the main benefit of the administrative procedure?

A quick, accessible, and effective resolution of trademark disputes.

2. What are the most effective grounds for cancellation?

Relative grounds based on prior rights.

3. How can genuine use of a trademark be proven?

With dated evidence: invoices, advertisements, sales statistics, web archives.

4. Can the INPI refuse to rule?

Yes, particularly in the event of a pre-existing legal dispute concerning the same facts.

5. Are actions for bad faith effective?

They are upheld in approximately half of the cases in which they are brought.