1 May 2013Jurisdiction reportsAurélia Marie

Technology names and trademarks in France

Besides the difficulty of defining the list of goods and services that a trademark covers, certain conditions have to be respected for the trademark’s use to be considered genuine under French law.

According to a Court of Justice of the EU (CJEU) ruling that French courts have to follow, genuine use must be “consistent with the essential function of a trademark, which is to guarantee the identity of the origin of goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin” (ECJ 11/03/2011 ANSUL).

Furthermore, a genuine use of a trademark must “relate to goods or services already marketed or about to be marketed and for which preparations by the undertaking to secure customers are under way, particularly in the form of advertising campaigns” (same decision).

The name must therefore be used as a trademark, which means that it must distinguish the relevant products and services from those belonging to other companies. The consumer should be able to make a link between these products and services, and the company from which they originate.

Therefore the name must identify the origin of the technology, not only informing about the mere existence of the technology.

“ADVERTISING ALONE MAY NOT BE CONSIDERED AS SUFFICIENT USE. THIS IS WHY IT IS RECOMMENDED TO MENTION TRADEMARKS ON THE PACKAGING OF PRODUCTS INCORPORATING THE TECHNOLOGY.”

More precisely, in order to avoid a mark being cancelled, the name of a registered mark must not only be distinctive, but must not become a descriptive term of the specific technology. The way the name is used is very important and the trademark owner should be very careful not to allow the term to become generic. The way the name is used in relation to products may also be a difficult issue, as the relevant technology may be commonly incorporated into or used alongside products, and not appear independently of them.

However, it is not always necessary that a trademark is affixed on products incorporating the technology that the name represents, even though that is standard practice.

A representation of the trademark in catalogues, or in advertising brochures, or during exhibitions, may also be considered as genuine use (for example, in a case in January 2011, the genuine use of a technology name DIVX, registered as trademark for DVD players, was proved by disclosing reproductions in catalogues). The trademarks must, at least, be shown beside the products in which the technology is incorporated, for designating the origin of this technology.

There is no obligation to mention ® in Europe, but it is still possible to mention ® or, at the end of a trademark, to highlight its existence (® means that the trademark is registered; ™ would mean that the trademark was applied for or is registered). Mentioning ® when the trademark is filed but not registered, may be considered as unfair competition or misleading advertising. For that reason, it is recommended to use ™.

The ® or ™ symbols should be mentioned in all cases after each reproduction of the trademark.

Furthermore, it is possible to add in advertising documents that the name of the technology is a registered trademark, which belongs to the company advertising it.

Advertising alone may not be considered as sufficient use. This is why it is recommended to have trademarks on the packaging of products incorporating the technology, or on the products, or in documents in relation with the products and the technology.

It is also strongly advised to collect and save evidence of trademark use, allowing one to reply if a third party contests its genuine use. For instance, videos broadcasting the technology that the mark represents are helpful, as well as leaflets related to the videos. Finally, keeping the invoices corresponding to sales of products incorporating the technology is helpful.

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