Revocation for non-use

The action for déchéance pour non-usage (roughly day-shay-AHNSS poor nohn-oo-ZAHZH) seeks the cancellation of a trademark that has not been used after the expiration of a five-year period following its registration. It is the French/EU counterpart of a US cancellation for abandonment — with structural differences US counsel should keep in mind:

• In France and the EU, no use is required to file, register or renew a mark; there is no equivalent of Section 8/71 declarations of use. Unused registrations sit on the register until someone attacks them, which means the French and EU registers carry a meaningfully larger volume of “dead wood” marks — registered, unrenounced, but never actually used — than the USPTO register does.
• The clock is a fixed five years from registration (versus the three-year non-use presumption of abandonment in US law). Note also what starts the clock: registration, not filing, and there is no requirement in France or the EU that the non-use be accompanied by an intent not to resume use, unlike the “intent not to resume” element built into the US abandonment standard — genuine use (or its absence) is what matters, not the owner’s subjective intent.

What counts as use

To defeat a non-use action, the owner must show genuine use of the mark for the goods or services at issue, in the relevant territory, during the five-year reference period (or, if registration is more recent, since registration). Token use designed only to preserve the registration does not count, and use must generally correspond to the actual goods or services as registered — using the mark only for a narrower or different line of products than the registration covers will typically preserve the mark only for that narrower use, not for the full original scope.

Where to bring the action

• Before the INPI for French trademarks — an administrative procedure, and therefore less costly than court litigation;
• Before the EUIPO for European Union trademarks;
• Before the Tribunal judiciaire as a principal claim in certain cases.

As a defense weapon

The revocation claim can also be raised by counterclaim in court: in an infringement action, the defendant may argue that the plaintiff never used the mark it is suing on, and that the mark must therefore be cancelled. Non-use revocation is thus both a clearance tool — clearing deadwood blocking a new filing — and a standard defense in French trademark litigation.

A concrete example

A US company wants to file a French mark but a clearance search turns up an identical, ten-year-old French registration in the same class, owned by a local business that appears to have gone dormant. Rather than abandon the name or negotiate a costly coexistence agreement, the US company’s French counsel can file a non-use revocation action before the INPI — an administrative procedure — to test whether the earlier owner can produce genuine use evidence; if it cannot, the obstacle is cleared.

Where you will meet this term

Non-use revocation is a standard step in trademark clearance search strategy whenever an older conflicting mark is found, a routine defense raised in trademark litigation in France, and occasionally a counter-move in responding to a trademark opposition when the opponent’s own mark looks vulnerable. See also: trademark revocation, trademark cancellation, genuine use.

← All glossary terms