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Trademark Invalidation at INPI: 3 Key Insights from 700 Decisions

Glossaire

  • Trademark Invalidation Action : Procedure allowing a third party to request the cancellation of a registered trademark, before the INPI or the civil courts. It may be initiated at any time during the life of the trademark. A distinction is drawn between absolute invalidity, based on a registrability defect, and relative invalidity, based on the existence of a prior right.
  • Applicant : Natural or legal person who files a trademark registration application with the INPI. The applicant becomes the trademark owner upon registration. In the context of a bad faith invalidity action, their conduct at the date of filing — in particular their knowledge of prior use — is central to the analysis.
  • Prior Right : A right whose existence predates the filing of the contested trademark and on which a relative invalidity action is based. It may consist of a registered trademark, a company name, a trade name, a domain name, or a protected geographical indication. Each prior right invoked must be demonstrated independently.
  • Non-Trademark Rights : Prior rights that are not registered trademarks but may form the basis of a relative invalidity action: company names, trade names, domain names, personality rights. Invoking them requires concrete evidence of the effective use of the sign, its geographical and sectoral scope, and its connection to the goods or services covered by the contested trademark.
  • Family of Marks : A set of trademarks belonging to the same owner and sharing a common distinctive element. The existence of a family may strengthen the likelihood of confusion argument, suggesting that consumers will associate a new mark with the existing series. However, the INPI reasons mark by mark: each prior right must be established independently, and relying on a family does not dispense with this requirement.
  • INPI (Institut National de la Propriété Industrielle) : French public body responsible for the grant and administration of industrial property rights: trademarks, patents, designs and models. Since the 2019 trademark reform, the INPI has jurisdiction to rule on inter partes invalidity and revocation proceedings, alongside the civil courts.
  • Inadmissibility : Rejection of an invalidity request without substantive examination, due to failure to meet a procedural requirement. The most common grounds: lack of INPI jurisdiction where the civil courts have been previously seised, a request combining claims falling under two separate jurisdictions, or a prior right that is insufficiently specified. An inadmissible request, even if well-founded on the merits, will not succeed.
  • Bad Faith : An absolute ground of invalidity applicable where the applicant, at the date of filing, intended to deprive a third party of a sign necessary to their business or to derive an illegitimate advantage from a prior use they were aware of. Bad faith is an autonomous concept under EU law, assessed globally. A registered prior right is not required: proof of prior use and of intent is sufficient.
  • Absolute Invalidity : Cancellation of a trademark that did not meet the conditions for registration at the date of filing: a sign devoid of distinctive character, a descriptive sign, a deceptive sign, a sign contrary to public policy, or a sign filed in bad faith. Absolute invalidity may be invoked by any person with a legitimate interest, without time limit.
  • Relative Invalidity : Cancellation of a trademark whose filing infringes a prior right belonging to a third party: a prior registered trademark, a company name, a trade name, a domain name, or a protected geographical indication. Only the holder of the prior right — or their successor in title — may bring a relative invalidity action.
  • Plurality of Prior Rights : A strategy consisting of basing an invalidity request on several prior rights simultaneously. While legally admissible, this approach does not produce an automatic cumulative effect: the INPI examines each right independently. Accumulating rights does not compensate for the weakness of a principal prior right. Each right must be capable of sustaining the request on its own.
  • Proof of Genuine Use : Obligation on the holder of a prior right to demonstrate that the sign has been genuinely and effectively used — not merely symbolically — in the relevant territory, for the designated goods and services, during the five years preceding the invalidity request. Admissible evidence includes invoices, catalogues, marketing materials, and dated website screenshots. Failing this, the prior right is set aside and the request may be rejected.
  • Admissibility : A prerequisite to the substantive examination of an invalidity request. The INPI verifies that the request complies with procedural rules before ruling on the merits. An inadmissible request is rejected without any assessment of the arguments on the merits. Admissibility issues relate in particular to INPI jurisdiction, standing to bring the action, and the specification of the prior right invoked.
  • Likelihood of Confusion : The central criterion in the substantive assessment of a relative invalidity action. The INPI evaluates whether the average consumer in the relevant sector is likely to confuse the two trademarks, or to make a connection between them. This assessment is global: it takes into account the similarity of the signs, the comparison of the designated goods and services, and the distinctive character – potentially enhanced through use – of the prior right.
  • Trademark Owner : Natural or legal person in whose name a trademark is registered, and who holds the exclusive rights attached to that registration: the right to prevent third parties from using the sign, and the right to assign or license the trademark. In invalidity proceedings before the INPI, the trademark owner is the respondent.

Trademark invalidation at INPI is more complex than a straightforward clash between two signs. Using our data extraction system, lipstip analysed over 700 decisions issued by the INPI. Three structural findings emerge.

Background.

A trademark invalidation action allows a third party to request the cancellation of a registered trademark. It can be based on an absolute ground — the mark was not registrable — or on a prior right, in which case it is referred to as relative invalidity. Since the 2019 trademark reform, the INPI has jurisdiction to rule on these requests, alongside the civil courts.

These proceedings are often described as a head-to-head between two trademarks: signs are compared, designated goods and services are examined, likelihood of confusion is assessed. The reality of actual decisions is more nuanced. Most cases are decided on other grounds, sometimes well before any confusion analysis takes place.

Questions such as “do individuals succeed more often than companies?” have answers. That is precisely the kind of question DECIDE, our case law research and analysis module, is built to answer.

1. Admissibility and Proof of Use: the Two Key Filters in INPI Trademark Invalidation

Before examining the signs themselves, two questions determine the outcome.

Admissibility is assessed before any substantive review. Across the decisions studied, nearly 15% include a section dedicated to this point, and 5% conclude with a finding of inadmissibility. The most common causes: lack of jurisdiction due to prior referral to the civil courts, or a prior right that is insufficiently substantiated.

15% of decisions raise an admissibility issue

5% conclude with a finding of inadmissibility

Proof of genuine use of the prior right is the second filter. 11% of decisions include a dedicated section on this point. If genuine use is not established — insufficient exploitation, reference period not adequately covered, use limited to products outside the scope of the claim — the prior right is set aside. A poorly prepared evidence file can lead to the rejection of an otherwise well-founded request.

11% of decisions address proof of genuine use

4.5% combine a use challenge with multiple prior rights

To maximise the chances of success, preparation must anticipate both of these aspects from the outset: identify the rights that can withstand a use challenge, and build a solid evidence file.

2. Nearly Half of Trademark Holders Targeted at INPI Are Individuals

This is one of the most striking figures in the dataset.

~50% of trademark holders targeted are individuals

20% of trademark applicants are individuals

While individuals account for approximately 20% of trademark applicants, they make up nearly 50% of the holders targeted in invalidation proceedings. This may reflect independent filers, micro-businesses without a formalised legal structure, founders who registered marks in their own name — or situations similar to the one documented in the ACTIRUMINE decision below.

NL20250109  ACTIRUMINE – Bad faith: an employee filing a trademark for their employer’s product name
Background. The holder of the contested trademark was still employed by the claimant at the date of filing, as a technical sales manager. The claimant had been using this sign for an animal nutritional supplement since 2022. The INPI declared the mark invalid and ordered the holder to pay EUR 1,100 in costs.
INPI’s test. Bad faith is assessed globally as of the date of filing. It requires two cumulative elements: knowledge of the prior use of the sign, and the intention to deprive another party of a sign necessary to their business.
What was decisive. The identity of the sign and the product, the timeline of the filing during the employment relationship, and the contractual duty of loyalty.
Practice note. A useful precedent for cases of opportunistic filing by an employee, commercial agent, or partner who had knowledge of signs in use but not yet protected. A strong lever in pre-litigation negotiations to secure a swift voluntary withdrawal.

3. Accumulating Prior Rights Does Not Mechanically Strengthen an Invalidation Request

19% of cases rely on multiple prior rights within a single request. The INPI examines each right independently. Stacking rights — several registered trademarks, a company name, a domain name — does not compensate for the weaknesses of a case.

The same logic applies to arguments based on a “family” or “series” of marks: the analysis remains mark by mark. Invoking a series strengthens the confusion argument, but does not exempt the claimant from a standalone demonstration for each right.

For non-trademark prior rights — company names, trade names, domain names — 12% of decisions reference them. Invoking them is not enough: the INPI requires proof that the right is actively exploited, in which territory and sector, and how it gives rise to a likelihood of confusion with the contested mark.

What This Data Changes for Preparing a Trademark Invalidation Action

Analysing this corpus does not change the applicable rules. It brings clarity on the stages where cases are actually won and lost.

  • Check admissibility before filing: INPI jurisdiction, choice of prior right, and its use.
  • Anticipate proof of use from the outset: identify the rights that can withstand a challenge.
  • Prioritise prior rights rather than accumulate them. Each right must stand on its own.
DECIDE – This data raises further questions: do individuals succeed as often as companies? Do multi-right cases have a better success rate? If use is challenged, can the action still succeed on a narrower scope?Combining party profiles, grounds invoked, and actual outcomes: that is precisely what DECIDE is designed to do. The analysis presented here is only a first layer.

Frequently Asked Questions on Trademark Invalidation at INPI

Who can file a trademark invalidation action at INPI?

For absolute invalidity, any party with a legitimate interest may apply to the INPI. For relative invalidity, only the holder of the prior right invoked – or their successor in title – can bring the action.

What is the difference between absolute and relative invalidity?

Absolute invalidity applies to a sign that should never have been registered: a descriptive, generic, or deceptive sign, one contrary to public policy, or one filed in bad faith. Relative invalidity is based on a prior right: a registered trademark, a company name, a domain name, or a protected geographical indication.

How is genuine use of a trademark proven in invalidation proceedings?

Genuine use requires real and effective exploitation of the sign, in the relevant territory, for the designated goods or services, over the five years preceding the request. Admissible evidence includes invoices, catalogues, marketing materials, dated website screenshots, and any document establishing a concrete commercial presence.

Methodology. Analysis conducted by lipstip on a corpus of 704 trademark invalidation decisions issued by the INPI, via automated data extraction and structuring. Lipstip is an AI system for intellectual property professionals, specialising in trademark case law research and law firm productivity.

En conclusion

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Who files trademark invalidation requests at INPI, and on what grounds? Lipstip analysed over 700 invalidation decisions. Three key insights: admissibility and proof of genuine use eliminate a significant share of cases before any substantive review; nearly 50% of the trademark holders targeted are individuals; and accumulating prior rights does not guarantee success.

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