Trademark forfeiture: the unsuitability of the second-hand market and sporadic export sales as evidence of genuine use

Paris Court of Appeal, Division 5, Chamber 2, 29 May 2026, No. 25/01842

A Paris-based company is the holder of a trademark registered in 1999 to designate various goods (perfumes, cosmetics, jewellery, leather goods, clothing).

Noting a failure to use the trademark, a company incorporated under Singaporean law filed an application for the total forfeiture of this trademark. Indeed, in the absence of genuine and continuous use for five years, the trademark holder risks forfeiture of their rights (Article L.714-5 of the French Industrial Property Code). This then allows the applicant to ‘reclaim’ the use of a sign that loses its trademark protection.

The INPI ordered a partial forfeiture of the trademark.

The Paris-based company lodged an appeal with the Paris Court of Appeal, whilst the Singaporean company lodged a cross-appeal, the INPI had not granted its application for forfeiture in respect of certain goods.

• The Court of Appeal has just confirmed the partial forfeiture of the trademark on the following grounds:
  The offering for sale of second-hand goods by third parties (Vinted, eBay, Etsy, auction houses) does not constitute genuine use of the trademark, since the holder has failed to demonstrate either their involvement, their authorization, or any economic benefit derived from these sales
• Use must be sufficient/serious (not isolated) and not merely symbolic (outside an excessively short time period), such that sales that are too limited or sporadic are insufficient to prevent forfeiture (sale of 3 necklaces at low prices over 5 years, sale of scarves concentrated over just 5 months)
• The holder has not demonstrated how forfeiture would constitute an ‘unfair and disproportionate sanction’, given that the sanction resulting from forfeiture is based on strict and objective rules applicable in the event of non-use of the trademark and valid for all economic operators

Expertise

The use of a trademark must be genuine. The assessment of whether the use of the trademark is genuine takes into account practices within the relevant economic sector, the nature of the goods or services in question, market characteristics, and the extent and frequency of the trademark’s use.

FIRSH regularly assists its clients in defining and implementing their trademark strategies:

• At the outset, to ensure the genuine use of their trademarks and thereby minimize the risk of forfeiture for non-serious use.
• Subsequently, by supporting them in proceedings aimed at obtaining the forfeiture of third-party trademarks that are insufficiently / not seriously or not at all used, where these constitute an obstacle to their protection or development strategy. The firm also assists them in forfeiture proceedings brought against them, in order to defend and preserve their rights.