Acquired distinctiveness

Acquired distinctiveness (caractère distinctif acquis par l’usage) is the mechanism by which a sign that was not registrable at the outset — because it lacked distinctive character or was descriptive — becomes registrable after the public has come to recognize it as a trademark through intensive use. It is the direct counterpart of the US doctrine of secondary meaning under Section 2(f) of the Lanham Act.

How it works in France

Article L.711-2 of the Intellectual Property Code opens this second chance in three situations: a sign initially devoid of distinctiveness, a sign composed exclusively of descriptive elements, and a sign that has become customary. In each, the applicant may still obtain — or defend — registration by proving that use has given the sign a distinctive function in the eyes of the public.

The INPI weighs concrete evidence: the scale of distribution, the duration and continuity of use, promotional investment, market share, and demonstrated public recognition. The assessment is global, and the use must be shown on a significant part of French territory (or, for an EU trademark, across the relevant part of the EU).

The key comparison with US law

The concept will feel familiar to US counsel — this is secondary meaning by another name. But two structural points differ:

• No supplemental register. US practice offers the supplemental register as a holding place for descriptive marks not yet distinctive. France and the EU have no equivalent: acquired distinctiveness is the only path to registering a weak sign, and it must be proven, not merely asserted.
• Timing of the proof. The evidence can be marshalled at examination (to overcome an absolute-grounds refusal) or later, defensively, when the mark is attacked in an invalidity action. Distinctiveness gained through use can rescue a registration years after filing.

A related, subtler idea is enhanced distinctiveness: a mark that was already valid can, through heavy use, become stronger — which widens the scope of protection it enjoys against later similar marks. Acquired distinctiveness makes a weak sign registrable; enhanced distinctiveness makes an existing mark more powerful.

A concrete example

A geographic or laudatory term — say, a place name used for a regional food product — is normally barred as descriptive of origin. If the producer can show years of continuous use, strongly rising sales and genuine consumer association of that name with its products, the term can acquire distinctiveness and be registered. Place names as trademarks are the classic beneficiaries of this route.

Where you will meet this term

Acquired distinctiveness is the escape hatch built into absolute grounds of refusal, and it shapes decisions about choosing a trademark — especially when a client is attached to a descriptive brand name. It is also a live issue in French filing strategy for weak signs. See also distinctive character and absolute grounds.

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