Revocation and trademark family: what proof of use?

When you have several similar trademarks, it is sometimes difficult to use all of them when they do not each cover a specific product.

Beyond this operational problem lies an important legal question.

This is the “trademark family”: are several trademark sharing the same distinctive element legally linked?

Is the use of a single trademark in the trademark family sufficient to protect the entire trademark family from revocation?

First of all, it is worth remembering what trademark revocation and the trademark family are, before concluding that it is necessary to use each trademark in the family.

Definition of trademark revocation for lack of exploitation

The trademark owner must use the trademark for the goods and services it covers.

In the absence of exploitation, it is exposed to a procedure called forfeiture for non-exploitation of Article L714-5 of the Intellectual Property Code :

“Any owner of a trademark who, without just cause, has not made genuine use of the trademark for the goods and services referred to in the registration for an uninterrupted period of five years” is liable to be forfeited.

In a very simplified way, this use must be made for commercial purposes, in business life, and not strictly internally or for a symbolic purpose (Ansul judgment — CJCE - 11 March 2003).

As a result, if a trademark is not used during the five years preceding the revocation procedure, the trademark owner may lose trademark rights for unexploited goods and services.

It should be noted that the rights will not be lost to the entire trademark but only to the products and services referred to on a case-by-case basis.

The purpose of this procedure is to avoid privatizing a sign when it is not in use. It protects the freedom of trade.

It is therefore necessary to make sure to properly exploit your brand if you want to maintain control of it and not expose yourself to a risk if a third party decides to exploit the same sign for non-exploited products/services.

Trademark family definition

The concept of a trademark family could have been a good solution in order to limit this risk of revocation.

The concept of trademark family has existed ever since 2007 and a Bainbridge judgment of the CJEU.

Case law indicates that trademarks are considered to be part of a trademark family if they share the same distinctive element.

As a result, the public could consider any mark using this distinctive element to be part of the same trademark family, which may cause confusion if the businesses using them are not related.

Trademarks registered by the same company often meet this criterion, if they include, for example, the company's corporate name or trade name followed by a product name.

Some have therefore questioned whether the use of a family trademark, which has reached a certain level of notoriety, is not sufficient to prevent the revocation of others. This solution is interesting because it would limit marketing investment to a single trademark.

Proof of use of each trademark in the trademark family to avoid revocation

The Rintisch judgment of the CJEU on 25 October 2012 dashed that hope:

“the use of a trade mark cannot be invoked in order to justify the use of another mark, since the aim is to establish the use of a sufficient number of marks in the same family.”

This judgment was transposed into French law by a Judgment of the Court of Cassation on 19 January 2016.

As a result, it is now impossible to hide behind the exploitation of a main brand to prove the use of all its brands.

The trademark that is used must be identical to the registered trademark to protect it against revocation. Only proof of use of a trademark identical to that which was registered is acceptable.

As an example:

• You have the brands “Blabla”, “Blabla2”, “Blabla2”, “Blabla2”, “Blabla4”.
• You only use the “Blabla” brand but want to continue to be able to use the other trademark.
• The sole use of the “Blabla” brand will not be enough to protect other brands from revocation.
• In business life, the brands “Blabla2”, “Blabla3” and “Blabla4” should be used.

If you have several trademarks, it is therefore advisable to exploit all of them in order to avoid losing the use of one of them.

This use must be serious and in business life. Serious exploitation is understood to mean a use to put products or services on the market, whether it is advertising use or the name of a product/service.

This solution is wise because it makes it possible to avoid the strategies of registering an entire family of brands in a strategy of obstructing competition.

This should be taken into account if you want to register several trademarks to maximize your protection strategy. In case of trademark registration, unless there is a defensive registration to prevent a third party from using a trademark for 5 years, it is necessary to use it for your business.