The revocation of the rights attached to a mark is incurred if the trademark has not been put to genuine use within an uninterrupted five-year period following the registration. Nevertheless, the later start or resumption of real and genuine use before a period of three months prior to the application for revocation restores the trademark rights.
This was recalled by the Cour de cassation (31 Jan. 2018, Appeal 16-10761), enforcing Article L. 714-5 of the French Intellectual Property Code according to which “genuine use of the mark begun or resumed after the five-year period referred to in the first paragraph of this Article shall not constitute an obstacle thereto if it has been undertaken during the three months prior to the request for revocation and after the owner has had knowledge of the possibility of such a request”.
In the case before the High Court, the revocation was sought from 8 June 1995. The period to be considered for genuine use thus was running from 8 June 1990 to 8 June 1995. However, the application for revocation had been filed after 30 June 2010, and the owner of the mark managed to produce numerous documents evidencing the genuine use of the mark after 8 June 1995 and therefore to save the mark from revocation. It should therefore be reminded that the reference period is the 5-year period preceding the date of the application for revocation, minus, when applicable, the 3-month suspicious period.
Take away advice
In the context of a prior right search, if an earlier mark is detected and if all indicates a lack of exploitation for more than a 5-year post-registration period, action needs to be taken immediately since the detected mark may still be assigned to a third party or be put to genuine use later. In such a case, the mark will be considered as being into force since the date of the application, not since the date of resumption of use. It would be a constant threat to your business.
You should consider sending a letter to the owner of the detected mark and request either the assignment on reasonable terms, or the consent to the registration and use of your own mark. If the answer is no and if no evidence of use of the mark is provided, you should consider filing an application for revocation before the courts or the trademark office.
INSCRIPTA will help you define the appropriate strategy.