Revocation and trademark families: must each mark be used?
Genuine use, trademark family, Rintisch ruling: why each trademark must be individually exploited to avoid revocation for non-use.
When you own several similar trademarks, it can be difficult to use them all when they do not each cover a specific product. Beyond this operational challenge lies an important legal question: is the use of one mark in the family sufficient to protect all others from revocation?
The trademark owner must use the mark for the goods and services it covers. Failing this, it is exposed to revocation proceedings under Article L714-5 of the French Intellectual Property Code. Where a mark has not been put to genuine use for an uninterrupted period of five years, the owner may lose rights in respect of the goods and services not exploited.
This use must be genuine, in a commercial context, in the course of trade — not purely internal or symbolic (CJEU, Ansul, 11 March 2003). The purpose of the procedure is to prevent the monopolisation of a sign that is not being used.
The concept of a trademark family was established by the CJEU in Bainbridge (2007). Marks are considered part of a family if they share the same distinctive element. The public may then associate any mark using that element with the same family. Some owners have questioned whether the use of one family mark could prevent the revocation of all others.
The CJEU’s Rintisch ruling (25 October 2012) settled this question: the use of one trademark cannot be relied upon to justify the use of another mark in the same family. This ruling was transposed into French law by the Court of Cassation on 19 January 2016.
The mark used must be identical to the mark as registered. If you own the marks “Blabla”, “Blabla2”, “Blabla3” and “Blabla4”, using only “Blabla” will not protect the other three from revocation.
If you register multiple marks, each must be genuinely exploited in the course of trade. For monitoring your marks, see the article on trademark monitoring. For filing, see the trademark filing guide and the intellectual property services page.
Filing a family of trademarks requires a realistic exploitation strategy. Each mark must be concretely used, or it risks revocation. If you need to structure your trademark portfolio, book a call.
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