Genericide and Proper Trademark Use in France

The doctrine, French edition

Keeping a trademark alive means fighting infringement — but also fighting generic use by third parties. When a mark’s owner lets the mark lose its function of indicating the origin of goods or services — when third parties are allowed to use it as if it were a common noun or a descriptive term — the owner can lose the mark altogether.

Article L. 714-6 of the French Intellectual Property Code provides:

“The owner of a mark which, through the owner’s own doing, has become: (a) the usual designation in trade of the product or service; (b) liable to mislead, notably as to the nature, quality or geographic origin of the product or service — incurs revocation of the owner’s rights.”

US practitioners will recognize the genericide doctrine that consumed aspirin, escalator and thermos as US marks. But note the French statute’s pivot: “through the owner’s own doing” (devenue de son fait). Where US genericness analysis asks primarily what the term means to the consuming public, French law adds a second, independent requirement about the owner’s conduct. That difference is the whole defense strategy.

Two cumulative conditions — and who must prove them

Revocation for genericide can be pursued before the judicial court, but also — since the 2019 reform created administrative cancellation — directly before the INPI. The INPI’s decision of Apr. 5, 2024, DC 23-0085 — RAPIDO is the reference example of the reasoning, and it is worth walking through because the mark survived.

The INPI’s framework, as set out in that decision:

• Burden of proof. It falls on the party seeking revocation to prove that the contested mark has become the usual trade designation of the goods or services concerned, and that this happened through the owner’s activity or inactivity — “these two conditions being cumulative” (citing CA Bordeaux, Sept. 24, 2019, RG 17/05270).
• The substantive test. The evidence must show the mark is used in trade to refer to the registered goods or services such that it “has lost its capacity to differentiate the goods or services in question from those of another undertaking.” The question is whether the mark is still capable of performing that differentiating function.
• The owner-conduct test. Revocation is pronounced only if the mark became the usual designation through the owner’s doing, which can consist of activity or inactivity (citing CJEU, C-409/12, point 32). The Court of Justice has defined “inactivity” as covering all situations in which the owner “is not sufficiently diligent in protecting the distinctive character of its mark” (CJEU, Mar. 6, 2014, C-409/12, Kornspitz, § 34).
• Effective date. Under the last paragraph of Article L. 716-3 of the Code, revocation takes effect at the date of the request — or, if a party so asks, at the earlier date when the ground for revocation arose.

What saved RAPIDO: the diligence record

In the RAPIDO case, the owner defeated the revocation claim with a documented enforcement posture. The INPI relied on two strands of evidence:

1. Consistent use of the ® symbol. The fact that RAPIDO appeared followed by ® was held capable of indicating that it is a trademark (citing CA Paris, June 12, 2015, RG 14/11690). Across the owner’s catalogs and most of its documents, RAPIDO carried the ® symbol — which, in the INPI’s words, “can only demonstrate use as a trademark and not generic use.”
2. A cease-and-desist program. The owner produced 17 formal demand letters sent to various operators in 2020 and 2022 asking them to stop using the term RAPIDO, follow-up letters where recipients did not react, and several responses from operators confirming they would cease the use.

The INPI concluded that the owner had acted “both preventively and curatively” to defend its mark during the relevant period — constant use of ®, plus active policing — and rejected the revocation claim. That is the template: not perfection, but demonstrable, contemporaneous diligence. On the mechanics of French demand letters, see cease and desist in France.

The dictionary weapon: Article L. 713-3-4

French law gives owners a specific statutory tool US counsel will appreciate:

“Where the reproduction of a mark in a dictionary, encyclopedia or similar reference work, in print or electronic form, gives the impression that it constitutes the generic term for the goods or services for which the mark is registered, the publisher shall, at the owner’s request, indicate without delay — and at the latest in the next edition if the work is printed — that it is a registered trademark.” (Article L. 713-3-4 of the Intellectual Property Code)

The practical consequence: demand correction of every generic use of your mark — in dictionaries, encyclopedias and online articles alike. Each correction obtained is both a fix and a piece of evidence of diligence for the file you hope never to need.

The compliance playbook for brand owners in France

Genericide risk concentrates on successful marks — the ones that name a product category in the public’s mind. The prevention program that emerges from the statute and the RAPIDO decision:

• Use the mark as a mark. Pair it with ® (or with wording indicating it is a registered mark), keep it distinguished from surrounding text, and never use it yourself as a common noun or verb. Your own usage can be held against you — “through the owner’s own doing” includes the owner’s activity, not just silence.
• Adopt a usage charter. A short internal and licensee-facing document fixing how the mark is written, what generic noun accompanies it, and what is forbidden. Drafting these charters is standard counsel work in our practice.
• Police third-party generic use. Demand letters to operators using the mark generically, with follow-ups — the RAPIDO record of 17 letters plus reminders is what a persuasive file looks like. Systematic trademark watching is what surfaces the misuse in the first place; where letters fail, infringement enforcement takes over.
• Correct reference works under Article L. 713-3-4, promptly and in writing.
• Archive everything. The burden framework rewards owners who can produce a dated paper trail covering the whole relevant period.

How this connects to distinctiveness doctrine

Genericide is the mirror image of acquired distinctiveness: distinctive character can be gained through use — and lost through unpoliced use. The INPI applies both doctrines with the same evidentiary seriousness, as our review of absolute grounds of validity shows. For US-based owners, the asymmetry with home practice is worth internalizing: France’s owner-conduct requirement means a genericide attack can often be defeated on the diligence prong alone — if the diligence actually happened and was documented. A French registration defended this way is a durable asset; see also how weak-but-used signs are rescued in the place-name context.

Also remember the second limb of Article L. 714-6: revocation equally threatens a mark that has become misleading through the owner’s doing — as to nature, quality or geographic origin. A brand whose product reality drifts away from what the mark conveys (including a place-name mark whose production moves elsewhere) should be re-audited, not just renewed at each renewal deadline.

Where we come in

We build and run genericide-prevention programs for marks used in France and the EU: usage charters, watch-driven policing, demand-letter campaigns with documented follow-up, dictionary corrections, and — when attacked — defense of revocation claims before the INPI and the courts on the RAPIDO model.

Is your mark becoming the name of the category in Europe? Contact us before the diligence file needs to exist retroactively.