Background
The dispute concerned the use of two French trademarks “G7” registered for transport services. The trademark holder had used the marks in connection with taxi services specifically. A third party petitioned for forfeiture of the trademarks for non-use under Article L.714-5 of the Code de la propriété intellectuelle, arguing that taxi services are an autonomous sub-category narrower than the broader registered category of “transport services” and “passenger transport.” The Court of Appeal rejected the forfeiture petition without investigating whether “taxi services” indeed constitutes an autonomous sub-category of the registered services. The petitioner appealed to the Cour de cassation.
The case was decided alongside a companion ruling (n° 23-21.866) of the same date, which the Cour de cassation also published in the official bulletin. Together the two decisions form the Commercial Chamber’s most authoritative current guidance on the autonomous-sub-category framework for trademark forfeiture.
The Court’s Holding
The Cour de cassation quashed the appellate decision and remanded. The Commercial Chamber held that when a court is asked to declare forfeiture of a trademark for lack of genuine use under Article L.714-5 CPI, it must perform a four-step analysis:
- Identify the goods or services for which the trademark is registered, as listed in the registration certificate.
- Determine whether the proven use of the trademark covers all of those goods or services, or only a narrower category within them.
- Where the proven use is narrower, determine whether that narrower category constitutes an autonomous sub-category within the registered category — that is, a sub-category that is sufficiently distinct in its purpose or destination (destination) from the rest of the registered category that consumers and traders perceive it as a separate market.
- If yes, declare forfeiture for the rest of the registered category and preserve the registration only for the autonomous sub-category that is genuinely used.
The Court emphasized that the analysis must focus on the essential criterion of purpose or destination of the goods or services. Judges are not limited to the categories or sub-categories explicitly listed in the Nice classification — the Nice classification is an administrative tool for trademark registration, not a substantive constraint on the autonomous-sub-category analysis. Within a registered class, finer-grained sub-categories may exist that are autonomous in commercial reality even if they are not separately listed in Nice. Judges must engage with the substantive market and consumer perception, not with the administrative classification.
The Court also reaffirmed that the burden of proving genuine use falls on the trademark holder, not on the petitioner for forfeiture, and that the assessment must be undertaken on the basis of concrete evidence of how the mark has been used in commerce.
Key Takeaways
- French courts asked to declare trademark forfeiture for non-use must engage substantively with whether the trademark holder’s actual use covers an autonomous sub-category of the registered category — this is now an explicit requirement, not optional.
- The autonomous-sub-category test focuses on purpose or destination of the goods or services, looking to commercial reality and consumer perception, not to the Nice classification taxonomy.
- Trademark holders with broadly registered marks should plan for the possibility that broad registrations will be partially forfeited if actual use is concentrated in a narrower sub-segment. Strategic narrowing of registrations or systematic evidence-of-use across the full registered range is advisable.
- Petitioners for forfeiture have a clearer path: identify the actual narrow use of the trademark, articulate why the broader registered category contains autonomous sub-categories beyond the actual use, and demand partial forfeiture for the rest.
- The decision aligns French law with EU Directive 2015/2436 Article 19 and CJEU jurisprudence (Aladin, ACTC v. Taiwan Excellence Awards) on the autonomous-sub-category test.
Why It Matters
French trademark forfeiture for non-use has long been an underused tool because the autonomous-sub-category analysis was inconsistently applied across the appellate courts. After May 2025, that inconsistency is harder to sustain: the Commercial Chamber has clarified that the autonomous-sub-category step is mandatory and must engage substantively with purpose and destination. Petitioners challenging registered marks now have meaningfully better prospects of obtaining partial forfeiture for the unused portion of broad registrations.
The decision also has implications for trademark portfolio management. French and EU registrants who have built broad-category portfolios — “Class 41 educational services,” “Class 9 software,” “Class 35 retail services” — should audit their actual use against the registered scope. Where actual use is concentrated in identifiable sub-segments, the broader registrations are vulnerable. Defensive strategies include filing narrower registrations within autonomous sub-categories, maintaining systematic use evidence across the registered range, and considering refiling with more granular goods/services lists.
The companion ruling on the same date (n° 23-21.866) reinforces the autonomous-sub-category framework in a parallel factual setting. Together, the two May 2025 rulings are likely to drive a wave of trademark-cleanup litigation in France over the next 18-24 months, particularly targeting broadly registered marks held by parties whose actual use is much narrower than their registration scope.