Proving Acquired Distinctiveness Under the CPI: Saving a Descriptive Mark in France

When the INPI refuses a trade mark application for descriptiveness or lack of distinctive character under Article L.711-2, 2°, 3°, or 4° of the Code de la Propriété Intellectuelle (CPI), the applicant has one potential lifeline: proving that the sign has acquired distinctive character through use (distinctivité acquise par l’usage). French law — in line with the EU Trade Mark Directive — recognises that a sign which is initially non-distinctive can become registrable if the relevant public in France has come to identify it as a brand. However, the evidentiary burden is high, and French courts and the INPI apply demanding standards that require careful and early preparation.

The Legal Basis: Article L.711-2 of the CPI

The final paragraph of Article L.711-2 provides that the prohibitions under paragraphs 2° (lack of distinctiveness), 3° (descriptiveness), and 4° (generic terms that have become customary) shall not apply where the trade mark has acquired distinctive character as a result of the use that has been made of it.

The CPI does not specify the exact date at which acquired distinctiveness must be assessed. The Court of Justice of the European Union (CJEU) clarified in its decision of June 19, 2014 (C-217/13) that acts of use dating back to before the filing date may be taken into account, provided they demonstrate that the mark was distinctive at the time of filing. Evidence of use that arises only after the filing date is generally insufficient to establish the required distinctiveness at the relevant date, though it may be considered as corroborative.

What Must Be Proven

The applicant must demonstrate that, as a result of extensive use, a significant proportion of the relevant public in France identifies the descriptive sign as a trade mark — that is, as an indicator of the commercial origin of the goods or services, rather than as a mere description of their characteristics.

French case law requires what is sometimes summarised as long, notable, and notorious use (“un usage long, notable et notoire”). This is a demanding standard that goes beyond mere proof of commercial activity.

Types of Evidence Accepted

The INPI and French courts, consistent with EU practice established by the CJEU in landmark cases such as Windsurfing Chiemsee (C-108/97 and C-109/97), consider the following types of evidence:

• Duration and geographic scope of use in France: How long the mark has been used, how consistently, and across which regions. The use must be substantial at the national level — limited regional activity may not suffice.
• Sales volumes and revenue: Figures demonstrating significant commercial activity under the mark in France, including units sold, revenue generated, and distribution footprint.
• Market share: Data showing the mark’s share of the relevant product or service market in France. A significant market share strongly supports consumer recognition.
• Advertising and promotional expenditure: Investment in marketing directed at French consumers, accompanied by samples of actual advertisements (print, digital, television, social media, outdoor). Both the amount invested and the reach achieved are relevant.
• Consumer surveys and market studies: Professionally conducted surveys demonstrating that a significant proportion of the relevant French public identifies the sign as a brand. Surveys must be methodologically sound: leading questions, biased sampling, or unclear methodology will undermine credibility.
• Media coverage: Press articles, reviews, editorial mentions, and social media attention in French publications and platforms that reference the mark in connection with the relevant goods or services.
• Third-party recognition: Awards, industry rankings, or independent assessments that reference the mark as a brand.
• Statements from trade associations: Declarations from relevant industry bodies in France confirming recognition of the mark in the market.

The Standard of Proof

No single piece of evidence is decisive. The INPI and courts make a global assessment based on the totality of the evidence. However, weak or isolated evidence — such as a handful of invoices or a single press article — will not suffice. The more descriptive the sign, the stronger the evidence required.

French courts have emphasised that the evidence must provide sufficient indications concerning the commercial volume, territorial scope, duration, frequency, and nature of the use, assessed in light of the characteristics of the relevant market. If the commercial volume is limited, additional evidence is needed to demonstrate that the use was nevertheless sufficient to create consumer recognition.

Use as a Trade Mark

The evidence must demonstrate use of the sign as a trade mark — that is, as an indicator of commercial origin. Use of a descriptive term merely in its descriptive sense (e.g., as part of a product description) does not contribute to acquired distinctiveness. The French Court of Cassation (Cour de cassation) has held that use of a complex mark containing a descriptive word element may be taken into account, provided the descriptive element functions as an identifier of origin within the composite sign.

Acquired Distinctiveness as a Defence to Invalidation

Even if a descriptive mark was registered without demonstrating acquired distinctiveness at the time of filing, the owner may defend against an invalidation action by showing that the mark has since acquired distinctive character through use. The owner bears the burden of proving that the mark has acquired distinctiveness before the date of the invalidity claim. This provides a post-registration safety net, but relying on it means accepting a vulnerable registration that may be challenged at any time.

The Procedure

When the INPI issues a provisional refusal for descriptiveness, the applicant has generally one month to respond. Evidence of acquired distinctiveness should be submitted within this period. If the INPI upholds the refusal, appeal lies to the Court of Appeal (Cour d’appel), which reviews the case on both fact and law.

Strategic Recommendations

• Build evidence before filing: Do not file a descriptive mark and hope to argue acquired distinctiveness on the fly. Accumulate evidence of use, advertising, sales, media coverage, and ideally a consumer recognition survey before submitting the application.
• Commission a proper survey: A well-designed consumer survey conducted in France by an independent market research firm is among the most persuasive evidence. Ensure the methodology is transparent and defensible.
• Document everything from day one: Maintain organised, dated records of all commercial activity, advertising, media coverage, and sales in France. This evidence may be needed years later.
• Prove national recognition: Evidence limited to a single region or city is unlikely to suffice. Demonstrate use and recognition across France.
• Consider the alternative: The most cost-effective strategy is often to invest in an inherently distinctive mark rather than spending significant resources to prove acquired distinctiveness for a descriptive one.

Common Mistakes

• Filing without evidence and expecting to argue later: The one-month response window is short. Evidence should be prepared in advance.
• Submitting only international evidence: Acquired distinctiveness must be proven in France. Global sales and international advertising do not substitute for French evidence.
• Using a poorly designed survey: Leading questions, biased sampling, or ambiguous methodology will undermine the survey’s value.
• Confusing advertising spend with consumer recognition: High expenditure shows investment, but does not directly prove that consumers perceive the sign as a brand. The evidence must demonstrate the result of the investment.
• Relying on pre-2019 leniency: The INPI’s standards for distinctiveness have tightened since the 2019 reform. What may have been accepted in the past may not be accepted today.

Key Takeaway

Acquired distinctiveness is the legal safety valve for descriptive marks in France — but it is a narrow and demanding path. The INPI and French courts require substantial, France-specific evidence demonstrating that the relevant public recognises the descriptive sign as a brand. Sales data, consumer surveys, advertising investment, market share, and media coverage all contribute to the assessment, but no single element is sufficient alone. The critical date is the filing date, meaning evidence must be prepared in advance. For most applicants, the more reliable strategy is to choose inherently distinctive marks that avoid the descriptiveness issue entirely.