Trademark cancellation (invalidity and revocation)

Annulation de marque is the umbrella term for actions that strip a registered French trademark of its effects — roughly what a US attorney would pursue through a TTAB cancellation proceeding or a court action for cancellation. A key difference from US practice: many of these actions can be brought administratively before the INPI (the French trademark office) as well as before the Tribunal judiciaire (the French civil court).

Available grounds

Before the INPI, a mark can be attacked through:

revocation for non-use — for a mark registered for more than five years that has not been used (compare US abandonment);
revocation for deceptiveness — where the mark misleads the public;
revocation for genericide — where the mark has lost its function of indicating origin and has become descriptive through common usage. Example: the mark TEXTO was cancelled because the term was used by all telecom operators to describe their services, in place of “SMS,” so it could no longer identify SFR as the source;
invalidity based on prior rights — an earlier trademark, company name, trade name or distinctive domain name used before the contested mark;
fraudulent filing (dépôt frauduleux) — comparable to a US bad-faith/fraud claim.

An invalidity action can always be brought before the Tribunal judiciaire, either as a principal claim under certain conditions or as a counterclaim in infringement litigation.

Effect

A cancelled mark is deprived of effect: it can no longer support oppositions, damages claims or injunctions.