Trademark registered: four reflexes to avoid losing it
One morning, one of my clients receives a letter from the INPI, the French trademark office. A competitor is seeking revocation of his trademark, registered six years earlier, for part of the goods it covered. The reason is simple: for those goods, the trademark had never genuinely been used. It cost the competitor only 600 euros, and he did not even need to develop his arguments.
My client thought his registration was secured once and for all. He discovers that a trademark is kept alive actively, as much as it is filed.
Filing and registration are only a starting point. Obtaining a registration certificate protects a sign, but does not exempt you from maintaining it. Four reflexes make the difference between a trademark that is strong, enforceable and capable of being monetised, and a vulnerable one that is lost at the first dispute. I come across them almost every week among entrepreneurs who had done the essentials well, then stopped thinking about it.
First reflex: put your trademark to genuine use
Like freedom of speech, a trademark is only worn out if you fail to use it. A registered trademark enjoys a grace period of five years from the publication of its registration. After that period, if it has not been put to genuine use for the goods and services it designates, for an uninterrupted period of five years and without proper reason, its owner is exposed to revocation of its rights1.
Two words deserve attention. “Genuine” first: a token use, intended solely to preserve the trademark, is not enough. The use must be real, on the market, for the goods or services concerned, as a trademark, during the five-year period and within the designated territory (France, the EU, and so on). “For the goods and services” next: a trademark filed in five classes but used in only one may fall for the other four. Revocation is then partial, but it opens the door to a competitor who would want the sign for the abandoned goods.
A point my clients often underestimate: the burden of proof. In revocation proceedings, it is for the owner to demonstrate genuine use of the trademark, by any means. Hence the importance of keeping, as you go, dated materials: invoices, catalogues, screenshots of the website, campaigns, packaging.
Resuming use at the last minute, for instance upon receiving a cease-and-desist letter, does not save the trademark either: use begun or resumed within the three months preceding the revocation request before the INPI (or a court), once the owner became aware that such a request was likely, is disregarded.
Since 1 April 2020, a revocation request may be brought directly before the Director General of the INPI2. The procedure is faster and cheaper than court action, and the applicant need not show any legal interest in bringing it. In other words, any competitor, present or future, can try. A dormant trademark is an easy target.
The right reflex: use the trademark for all the goods and services covered, and archive dated evidence.
Second reflex: monitor third-party filings
Filing your trademark does not trigger any automatic monitoring. The INPI registers and publishes, but does not warn you when a third party files a sign identical or similar to yours. The EUIPO, the “European INPI”, does send surveillance notifications to owners of earlier EU trademarks, but only partially.
And the window to react is short. The owner of an earlier trademark may oppose the registration of an application within two months of its publication in France3, and within three months for an EU trademark4. Opposition is an effective and inexpensive administrative procedure, far lighter than infringement litigation brought once the conflicting trademark is registered and used. Missing that deadline does not, however, close off every remedy: an action for invalidity of the conflicting trademark remains available, now directly before the INPI. But delaying deprives you of the simplest and most economical means of opposing a troublesome filing, and costs time.
Monitoring means looking in the right place: trademark registers, but also domain names and social-media accounts, where an infringement is often built up before any formal filing. Organised monitoring, ideally entrusted to a professional, turns a threat detected in time into a simple opposition form. The same threat discovered two years later costs far more. Monitoring also means documenting: every disputed sign spotted, dated and archived feeds a file that will serve, where appropriate, to demonstrate the seniority of your rights and a third party’s bad faith.
The right reflex: have a monitoring system set up by a lawyer.
Third reflex: preserve distinctiveness
A trademark lives off the distinctive character that made it registrable, or that it acquired over time. Conversely, that distinctive character can be lost. Where, through the act of its owner, a trademark has become the common designation in trade for the product or service, the owner is exposed to revocation for genericide5. The most frequently cited examples are the ESCALATOR, CADDIE, BOTTIN and SOPALIN trademarks, which became the common name of the product they were initially alone in designating.
The risk is real for trademarks that succeed. The more a name takes hold, the greater the temptation, including internally, to use it as the common name of the product. That is how a strong trademark becomes commonplace and ends up designating the whole category, without its owner having done anything to prevent it. The remedy lies in the way the trademark is used: use it as an adjective placed before the generic name of the product, signal its trademark status with the ® symbol (which has no legal force but only informational value), and above all react actively against generic uses, through cease-and-desist letters and, if necessary, court action. This is a legal requirement.
The right reflex: have your trademark actively defended by a lawyer against the generic uses identified.
Fourth reflex: renew on time
There remains the obvious point that is nonetheless sometimes forgotten. A French or EU trademark is registered for ten years, and is indefinitely renewable6. A missed renewal, after the six-month grace period (subject to an additional fee), drops into the public domain an asset sometimes built over years of investment.
And a fresh filing does not always repair the oversight: a third party may, in the meantime, have filed the same sign, and the new filing restores neither the seniority nor the lost rights.
The right reflex: entrust the monitoring of deadlines to a lawyer, in order to anticipate the ten-year term rather than suffer it. A deadline noted and delegated is worth more than a reminder lost in an inbox.
LAZULI assists trademark owners before, but also after filing.
The firm offers a fixed-fee scoping consultation to review your portfolio: revocation risk, setting up monitoring, renewal schedule, securing evidence of use. If an opposition, an invalidity action or a revocation action is at stake, I tell you the deadlines and the budget up front. To discuss it, book an appointment via the Contact page.
Jérémie LEROY-RINGUET, June 2026
- Article L. 714-5 of the French Intellectual property code ↩︎
- Article L. 716-3 of the French Intellectual property code; the court retains jurisdiction where the revocation claim is a counterclaim, or where there is a related claim falling within its exclusive jurisdiction. ↩︎
- Articles L. 712-4 sqq of the French Intellectual property code ↩︎
- Article 46 of Regulation (EU) 2017/1001 ↩︎
- Article L. 714-6 of the French Intellectual property code ↩︎
- Article L. 712-1 of the French Intellectual property code ↩︎
