Modified use of a registered trademark: be careful not to alter its original distinctive character

Unlike Anglo-Saxon countries, where use can generate trademark rights (e.g. in the United States[1] ), in France, as in all European Union countries, this right is acquired solely by registering[2] the trademark with the Office.

Five years after registration of the trademark, the owner runs the risk of having to prove its genuine use at the request of any third party, either in opposition proceedings[3] or cancellation proceedings against a third-party trademark, or in a revocation action[4] for non-use against its registration.

In the first case, the lack of serious use leads to the ineffectiveness of the defensive action. While in the second, the very survival of the trademark is at stake.

However, it is not uncommon for a trademark to undergo changes after registration, and to end up being used in a different form from that in which it was originally registered.

The question then arises whether such modified use constitutes use of the registered trademark, enabling rights to be retained in the event of an action.

Under French law, in application of EU law, the possibility of using the trademark in a different form is only allowed on condition that the essential element characterizing it is not modified to such an extent. Otherwise, the trademark in the form used must be considered as a new trademark, which would no longer be covered by the original registration. [5]

As a reminder, the distinctive character of a trademark enables consumers to identify the commercial origin of products or services, i.e. to identify them as originating from one company and to distinguish them from those marketed by other companies.

In a judgment handed down on February 23, 2006the General Court of the European Union (hereinafter referred to as the “General Court”) recalled that the purpose of this rule is to enable the trademark owner to make variations to the sign, in the course of its commercial exploitation, which, without altering its distinctive character, enable it to be better adapted to the marketing and promotional requirements of the goods or services concerned. [6]

Furthermore, he clarified that when the sign used in commerce differs from the form in which it was registered only in negligible respects, the two signs can be considered equivalent overall. In such cases, the obligation to use the registered trademark can be fulfilled by providing proof of use of the sign which constitutes the form used in commerce.

As will be explained below, two aspects are fundamental to this assessment: the degree of distinctiveness of the registered trademark and its perception by consumers.

We’ll then look at a few practical examples to help us better understand these principles.

I. The degree of distinctiveness and public perception

To assess whether the use of a registered trademark in a different form enables rights to be retained over it, it is necessary to take into account the degree of distinctiveness, on the one hand.

And the public’s perception of the modified form of the trademark, on the other.

A. The importance of the degree of distinctiveness of the registered trademark

The EUAT ruled that “the weaker the distinctive character of [the registered trademark], the more easily it will be altered by the addition of an element that is itself distinctive, and the more the trademark in question will lose its ability to be perceived as an indication of the origin of the product it designates“.[7]

Thus, if a registered trademark has a weak distinctive character from the outset, its use in a modified form is more likely to lead to the conclusion that its distinctive character has been altered.

This was the case for the POPOTE trademark, which was ab initio not very distinctive to designate restaurant services “in that it evokes a characteristic of the cuisine offered, namely simple and homemade“[8]. INPI therefore ruled that the use of this trademark in the modified form “POPOTE BOX” or “LA POPOTE DU MARCHÉ” altered the distinctive character of the registered trademark POPOTE.

Conversely, if the trademark has a normal or even high level of distinctiveness, it will be less likely to be altered by changes during use.

For example, the addition of the name BEER to the registered trademark STEAM, covering “beers”, although dominant by its size and position in the sign used, did not alter its distinctive character. [9]

B. Taking the relevant consumer into account

The assessment of the use of a trademark in a modified form also necessarily incorporates the consumer’s perception of it, who must find the essential elements of the trademark as initially registered.

By way of illustration, it has been ruled that the addition of certain elements, that did not appear in the registered trademark, did not lead to the alteration of distinctive character. They did not prevent the average consumer from perceiving the shape of the trademark as it had been registered. [10]

II. Modified use of word and figurative marks

We’ll look at a few practical examples concerning word marks, on the one hand, and figurative marks composed of both verbal and figurative elements, on the other.

A. Indifference to the addition of decorative elements to word marks

Word marks consist of one word or a group of words. They are very often registered in black characters in a simple font.

In practice, however, these trademarks are often used in color, in relatively stylized characters, or even accompanied by figurative elements describing the products or services offered.

The addition of these elements undeniably modifies the form of the registered trademark, insofar as they do not appear in it

However, it was ruled that “the INPI was right to consider that use of the complex sign ASSAINOL constituted use of the word mark at issue, since the addition of figurative elements likely to represent a roof and a green leaf on the letter I did not alter the distinctive character of the word mark ASSAINOL“.[11]

B. Greater distinctiveness of verbal elements over figurative elements

When a registered trademark includes both a word, or several words, and figurative elements, such as a logo, the former generally takes precedence over the latter. This is especially the case when the verbal element occupies a prominent place.

It is settled case law that “when a trademark is composed of verbal and figurative elements, the former are in principle more distinctive than the latter, since the average consumer would more easily refer to the product in question by quoting the name than by describing the figurative element of the trademark“.[12]

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In conclusion, the use of a trademark in a form that differs from the registered one should be approached with caution.

It’s essential to anticipate the issues right from the filing phase and to regularly review the use of your trademarks.

As Industrial Property specialists, we can help you define and implement such strategies, not only to prevent the risks associated with modified trademark use. We can also help consolidate and enhance your rights over the long term, notably by auditing your portfolios.

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[1] For further information, see : J. E. ANFOSSI-DIVOL “Comparative Approach to Federal US Law and Franco-European Law on Trademarks: Use and Registration as Essential Elements of the Harmonization of Trademark Lawpub. ed CEIPI, 2003.

[2] Article 6 of the EU Trademark Regulation (EUTR); Article L. 712-1 of the French Intellectual Property Code (CPI).

[3] Article 47, 2. RMUE; article L. 712-5-1 CPI.

[4] Article 58, 1. a) EUMR; article L. 714-5 CPI.

[5] Article L. 714-5 of the French Intellectual Property Code lays down the principle that “use within the meaning of the first paragraph (…) 3° means the use of the trademark, by the owner or with his consent, in a modified form that does not alter its distinctive character“.

[6] TUE, Feb. 23, 2006, aff. n° T-194/03, Baindbridge.

[7] TUE, Oct. 10, 2018, aff. n° T-24/17, D-Tack.

[8] INPI, Apr. 15, 2022, DC 21-0072.

[9]  TUE, Sept. 14, 2022, case no. T-609/21, Steam.

[10] TUE, Oct. 26, 2022, aff. n° T-273/21, The Bazooka Companies / EUIPO – Bilkiewicz (Shape of a baby bottle).

[11] Paris Court of Appeal, June 15, 2022, RG n°22/11271, confirming INPI’s decision of March 15, 2021, DC 20-0009.

[12] TUE, 09 févr. 2022, aff. n° T-589/20, Maimai made in Italie c./ Yamamay