Cass. com., 12 November 2026, No. 24-21.401, published in the Bulletin
To the general public, Zoom is a videoconferencing software. To musicians, it is first and foremost a Japanese brand of recorders and audio equipment. The two companies have been in dispute for several years over the French trade mark “Zoom”, and on 12 November the French Supreme Court (Cour de cassation) ruled on two questions of principle concerning revocation for non-use (Cass. com., 12 November 2026, No. 24-21.401, published in the Bulletin).
The facts. On 19 February 1990, the Japanese company Kabushiki Kaisha Zoom filed the French word mark “Zoom” for goods in Classes 9 and 15, including “sound recording apparatus”, “outdoor public address systems”, “computer graphics creation and editing systems” and “tape recorders”. The registration, examined under the former law, was only published in 1993. The mark was then renewed in 2000, 2010 and 2019.
On 12 November 2021, the American company Zoom Video Communications applied to the French IP Office (INPI) for revocation of the mark in its entirety. The Director General of the INPI dismissed the application on 10 November 2022 and the Paris Court of Appeal upheld that decision on 5 July 2024.
The decision. The Court of Cassation partially quashes the judgment, for four categories of goods. It lays down a clear rule: use of a mark for goods which, as technology evolved, replaced those covered by the filing does not amount to genuine use for the latter (1.). It also clarifies the role of the court when faced with a broad category of goods and holds that the court must, where appropriate, divide it into independent subcategories (2.). These solutions have very practical consequences for the management of trade mark portfolios (3.).
1. No genuine use through technological equivalence
Tape recorders and digital recorders. To avoid revocation for “tape recorders”, the proprietor produced evidence of sales of digital recorders. The Court of Appeal had accepted it: tape recorders, which record sound on magnetic tape, have been replaced by digital recorders as a result of technological progress.
The Court of Cassation censures that reasoning. In its view, genuine use requires the mark to be used to designate the goods and services covered by the filing, “and not other goods or services, even if, as a result of technological progress, the latter have replaced the former” (§ 19).
Technological progress alone therefore does not allow the registered specification to be extended to new goods, even where they perform a function comparable to that of the goods originally designated. The reporting judge’s report bases this solution on legal certainty for third parties. It points out that the scope of a mark may be narrowed, through surrender or revocation, but not broadened without a new filing. This reasoning is consistent with the French Intellectual Property Code: a renewal may not extend the list of goods and services, which requires a new filing (Art. L. 712-9).
The Advocate General shared this analysis: he accepted that both technologies share a sound archiving function, but not the same purpose. Digital recording does not degrade over time, allows sound processing and stands out for its portability and ease of use. Their methods of use and their customers also differ. To cover digital recorders, the proprietor therefore had to make a new filing.
“Outdoor” public address systems. The same rigour applies to “outdoor public address systems”. The Court of Appeal had accepted evidence of use for microphones, mixing desks, amplifiers and audio interfaces. The Court of Cassation criticises it for failing to examine whether this equipment was intended for use outdoors, a necessary condition for it to fall within the registered category (§ 17). It recalls that genuine use is assessed in relation to the goods covered by the filing, “and not other goods or services, even similar ones” (§ 15), in line with settled case law (Cass. com., 9 March 2010, No. 09-13.231).
Software applications. Finally, the Court of Appeal had held that recording applications (“Handy Recorder”) amounted to use for “computer graphics creation and editing systems”. It had not addressed the submissions arguing that they were simply audio software with a graphical interface: the judgment is quashed for failure to respond to submissions (§ 13).
2. The role of the court: identifying independent subcategories
The EU principle. Where a mark is registered for a broad category of goods that can be divided into independent subcategories, its proprietor must prove use of the mark for each of them. Failing that, the mark may be revoked for the subcategories not used. The essential criterion for identifying them is the purpose and intended use of the goods (CJEU, 22 October 2020, Ferrari, C-720/18 and C-721/18).
Application to recorders. The proprietor only marketed portable recorders, intended for recording at concerts or small events. The Court of Appeal had held that the category of “sound recording apparatus” could not be divided, since its purpose would always be to capture and record sound. Yet the General Court of the European Union, in a dispute concerning the same company’s EU trade mark, had upheld its limitation to “portable recorders” only (GC, 24 April 2018, T-831/16).
According to the Advocate General, the General Court later recognised “portable recorders” as an independent subcategory, their ability to broadcast sound and video being merely an ancillary function (GC, 30 June 2021, Zoom v EUIPO and Facetec, T-204/20). The dispute is also continuing before the EUIPO over the Japanese company’s EU trade mark. The Cancellation Division revoked it in its entirety on 31 July 2025 (No. C 50 197), but the Board of Appeal remitted the case on 23 July 2026 for a fresh assessment of use, in particular for sound recording apparatus (R 1741/2025-2 and R 1773/2025-2). That decision is under appeal before the General Court. The Advocate General concluded that the judgment should be quashed on this point.
The Court of Cassation criticises the Court of Appeal for failing to examine whether portable recorders formed an independent subcategory (§ 9). Above all, it sets out the method in a statement of principle (§ 7):
the court must examine whether the category can be divided, “objectively and not arbitrarily”, into independent and coherent subcategories;
it must do so even if the proprietor never identified any subcategory, either at the time of filing or during the proceedings;
it applies the purpose or intended use of the goods as the essential criterion;
it is not bound by the headings of the Nice Classification, which are only an indication.
A broad specification therefore does not guarantee uniform protection: where the registered category can be divided into independent subcategories, the proprietor must prove genuine use for each one it wishes to retain. Conversely, if the goods used do not form an independent subcategory, their use may suffice to maintain protection for the whole category. The Court of Cassation thus confirms the alignment of French case law with that of the Court of Justice, which began in 2025 (Cass. com., 14 May 2025, No. 23-21.866 and No. 23-21.296).
A justified requirement. The Advocate General explained the reason for this strictness: under French and EU law, a mark can be registered without proving actual use or even an intention to use it, unlike under US law. Without scrutiny of actual use, registers would fill up with unused marks, to the detriment of competitors. He also highlighted how far the Commercial Chamber has come, since it still held in 2016 that courts did not have to look for independent subcategories (Cass. com., 5 July 2016, No. 14-18.540).
Use in a modified form. On the other hand, the Court dismisses the complaint concerning use of the mark together with product references, such as “Zoom B3n” or “Zoom G5n”. The reporting judge and the Advocate General agreed on this point: these alphanumeric references, customary in the sector, are perceived as mere technical specifications and do not alter the distinctive character of the mark (Art. L. 714-5, 3° of the French Intellectual Property Code).
3. The practical impact of the ruling
A referral, not a revocation. The Court of Cassation does not itself revoke the mark. It partially quashes the judgment and refers the case back to the Paris Court of Appeal, sitting in a different composition. That court will have to examine whether portable recorders form an independent subcategory, whether the public address equipment is intended for outdoor use and which category the Handy Recorder applications belong to. For tape recorders, it will have to assess use in relation to the goods covered by the filing alone, disregarding digital recorders. The outcome of the dispute will therefore depend on the evidence of use examined on this new basis. The principles laid down nevertheless apply immediately to all trade mark proprietors.
For proprietors. An old mark filed for outdated goods does not cover their technological successors. A few steps are essential:
audit the specifications of older marks, particularly in sectors where technology moves fast (audio, video, IT, telephony);
draft specifications based on the goods actually offered, anticipating reasonably foreseeable developments in the business;
file a new mark when the goods actually marketed are no longer covered by existing marks, as part of a coherent strategy rather than through piecemeal filings;
keep dated and precise evidence of use, organised by product or by category covered by the filing;
identify the subcategories actually used, without waiting for a third party to raise them.
For revocation applicants. The ruling gives them strong arguments. It allows them to challenge use relied on for neighbouring or more recent goods, and to require the court to look for independent subcategories according to the purpose of the goods.
This decision is a reminder that the protection of a trade mark must keep pace with the development of its proprietor’s business. Renewal is not enough: specifications must be regularly compared with the goods actually marketed.
Sources
Paris Court of Appeal, Division 5, Chamber 2, 5 July 2024, No. 23/03022
EUIPO, Second Board of Appeal, 23 July 2026, R 1741/2025-2 and R 1773/2025-2
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