Choosing a Mark
Absolute grounds are the INPI's ex officio filter: distinctiveness, descriptiveness, deceptiveness. They can sink a filing — but French law offers a second chance that US counsel will recognize: acquired distinctiveness through use.
Absolute grounds of refusal are the fundamental obstacles to registering a trademark in France. They are examined ex officio by the INPI and can lead to outright rejection of an application, without any third party lifting a finger — the structural equivalent of a USPTO examining attorney’s refusal under Section 2(e), rather than an inter partes dispute.
Article L. 711-2 of the French Intellectual Property Code bars, in substance: signs lacking distinctive character; signs consisting exclusively of indications designating a characteristic of the goods or services (kind, quality, quantity, purpose, value, geographic origin, time of production); signs that have become customary in trade; functional and value-conferring shapes; signs contrary to public policy; deceptive signs; and bad-faith filings.
The policy is twofold, and familiar: keep generic, descriptive and customary terms available to all competitors, and keep the register clean so that registered marks actually perform their function of distinguishing one company’s goods from another’s.
But a mark initially refused — or attacked — on these grounds can sometimes be saved by proving acquired distinctive character through use, the French counterpart of Section 2(f). There is no supplemental register in France or the EU; acquired distinctiveness is the path.
Article L. 711-2 offers the second chance in three hypotheses.
A mark that lacks distinctiveness at the outset can be validly registered if the applicant proves intensive use. The INPI examines the scale of distribution, the duration of use, promotional investment and public recognition.
The reference decision is INPI, Oct. 28, 2021, NL 21-0071 — BRASSERIE DU MONT BLANC. The mark — initially descriptive of a geographic origin — acquired distinctive character for beers on the strength of sharply rising sales (from 4 million to 18 million bottles between 2014 and 2019), numerous competition awards, and constant use since 1999. In the INPI’s words, these elements taken globally attested to intense use of the sign for beers on a significant part of French territory, and to national and international recognition. Place-name marks are the classic beneficiaries of this mechanism — we analyze them in depth here.
A mark made up solely of elements describing a characteristic of the goods — kind, quality, quantity, geographic origin — cannot initially be registered, but the prohibition can be lifted through use.
INPI, Dec. 30, 2021, NL 21-0126 — SEL CRISTAL shows the flip side of the same coin: use strengthening a mark’s legal position. The INPI recognized that the CRISTAL mark of Champagne Louis Roederer enjoyed enhanced distinctiveness through long-standing, constant and substantial use on French territory, its presence in numerous newspapers, magazines and books, and case law acknowledging its repute.
A mark consisting exclusively of elements that have become usual in everyday language or in fair and established trade practices can be refused. But if the applicant proves with tangible evidence — invoices, advertising campaigns, judicial recognition — that the mark has kept or acquired distinctive character despite that customary use, registration remains possible.
The evidentiary bar is high, and recent INPI decisions make the criteria legible:
For US companies: this is a build-the-record exercise comparable to a Section 2(f) showing, but assessed against the French public and French territory. If your sign has a known weakness, the file should be assembled from launch day, not from the day the office action or invalidity claim arrives.
To refuse or invalidate a mark as descriptive, the INPI’s recent decisions consistently require a “direct and concrete link” between the sign and the goods, perceived immediately and without reflection by the relevant consumer. Three decisions frame the standard.
In INPI, June 13, 2022, NL 21-0119 — AIRADVANCED, the INPI held that even for goods directly related to air treatment (suction machines, filters, air-quality sensors), the combination of “Air” and “Advanced” was not descriptive: while each term might be understood in isolation by the relevant public, their combination — literally “advanced air” — had no concrete meaning and remained vague, with no immediately perceptible sense. It was therefore not established that the French consumer could, at the filing date, draw a direct and concrete link between AIRADVANCED and the goods, or immediately perceive the description of an objective characteristic.
INPI, Oct. 26, 2022, NL 21-0244 — EAU THERMALE LA BOURBOULE confirms the approach and the burden of proof. The invalidity claim failed because the challenger asserted that the expression designated a characteristic of the goods without demonstrating the link between the sign and those goods — the public would manifestly not assume thermal spring water is an ingredient of the perfumery and make-up products at issue.
INPI, Apr. 3, 2024, NL 22-0199 — GOUTTES BLEUES adds the compositional rule: for multi-element marks, descriptiveness may be examined element by element, but must in any event be established for the whole they form. It was not shown that the term was understood — by the general public or by pharmacists and medical staff — as immediately and without reflection designating methylene blue and thus the composition of the goods.
The practical takeaway for filers: French examination is not a mechanical dictionary exercise. Combinations, allusions and suggestive terms regularly clear the bar — which is a genuine argument for including a French national filing early in a European filing program, and one of the parameters in choosing the sign itself.
The distinction is fundamental to any filing strategy in Europe.
Absolute grounds are examined by the INPI of its own motion at filing. A descriptive or non-distinctive mark will be refused with no third-party involvement.
Relative grounds — conflicts with earlier rights — are examined only if a third party opposes or seeks invalidity. A French or EU application is not refused ex officio over prior marks; a mark can therefore be registered even though it collides with earlier rights, and falls only if the owner of those rights acts. This is a major difference from USPTO practice, where the examining attorney raises prior registrations under Section 2(d). It is covered in detail in our companion article on third-party rights, and it is why trademark watching is not optional in Europe.
Distinctiveness can be lost as well as gained. Under Article L. 714-6 of the Intellectual Property Code, an owner whose mark has become, through the owner’s own doing, the usual trade designation of the goods or services incurs revocation. INPI, Apr. 5, 2024, DC 23-0085 — RAPIDO shows both the risk and the defense: the owner escaped revocation by demonstrating preventive and curative measures — notably 17 cease-and-desist letters to operators, with follow-ups where there was no reaction. The INPI requires two cumulative conditions: loss of distinctive capacity, and the owner’s inaction in the face of it. We treat the doctrine and the compliance playbook in our article on genericide and proper trademark use.
Before any filing, have the distinctive character of the proposed sign analyzed properly. A term that is too descriptive or too allusive may look attractive to marketing, but it exposes the mark to refusals — or worse, to invalidity actions that are hard to defend.
And if the chosen mark has a known weakness, document its use from day one: invoices, advertising materials, press coverage, market-share data. That record can later make the difference in proving acquired distinctiveness — as BRASSERIE DU MONT BLANC demonstrates, decision by decision, product by product. Remember the limits, too: in that case the mark survived only for beers, and only those originating from or brewed in the Mont Blanc geographic area.
Weighing a borderline sign for France or the EU? Ask us for a distinctiveness assessment before you file.
How to choose a protectable sign and draft the goods and services for a French or EU trademark filing — a Paris practitioner's guide for US counsel.
Can a US company register a city or place name as a trademark in France or the EU? The descriptiveness test, acquired distinctiveness, and filing strategy.
Prior marks, reputed marks, company names, likelihood of confusion: how third-party rights defeat French trademarks, and why watching is essential.
How French law handles genericide: revocation under Article L. 714-6 CPI, the RAPIDO decision, dictionary corrections, and the owner's compliance playbook.