The loss of its trademark rights by the Mark owner through degeneration occurs in two situations: a trademark that has become misleading, and a trademark that has become generic.
The latter type of degeneration is the one most readily noticeable in our daily lives. It concerns trademarks that have entered everyday language to such an extent that they have become common nouns used to designate the very goods or services for which they were originally protected. “Fermeture éclair”, the French term for a zip fastener, was a trademark for zip fasteners before becoming generic and entering everyday language. At this stage, when the trademark has become the name of the product, the registered right may be revoked and the owner’s rights in the trademark cease to exist.
Under French law, revocation on the ground that a trademark has become generic is provided for in Article L. 714-6(a) of the French Intellectual Property Code:
“The owner of a trademark is liable to have its rights revoked where, as a result of its own acts or inactivity, the trademark has become:
a) The common designation in the trade for the product or service;”
This provision sets out the conditions that must be met for a trademark to be considered generic:
- the common designation: the trademark must be used as the usual term for the goods, not only by the general public but also by professionals (see the 2012 Pierrade decision[1]);
- in the trade: the use must relate to a commercial offering of goods or services. Uses in press articles, for example, are indicators but are not sufficient;
- as a result of its own acts or omissions: there is no degeneration where the proprietor can show that it has taken the steps and actions necessary to oppose generic uses of its trademark by third parties, in particular by bringing legal proceedings, sending cease and desist letters or filing oppositions.
Any action taken by a trademark owner to counter generic uses of its trademark is useful: raising awareness among internal teams and business partners, and approaching the press or publishers. Since 2019, Article L. 713-3-4 of the French Intellectual Property Code[2] has expressly required publishers of dictionaries or encyclopaedias to correct publications that fail to clearly identify protected trademarks as such.
Of course, these measures require constant vigilance and carefully considered action to maintain full protection for the trademark.
They are nevertheless essential to ensure that commercial success is accompanied by full legal protection.
[1] Lyon Court of Appeal, 2 February 2012, Pierrade https://www.legifrance.gouv.fr/juri/id/JURITEXT000025873489
[2] “Where the reproduction of a trademark in a dictionary, encyclopaedia or similar reference work, in printed or electronic form, gives the impression that it constitutes the generic term for the goods or services for which it is registered, and the trademark owner so requests, the publisher shall indicate without delay, and at the latest in the next edition if the work is printed, that it is a registered trademark. ”
October 2026
Contributing author
