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“PACTE LAW”: “TRADEMARK PACKAGE”

17
MAR.
By Cabinet Bouchara - Expertise Blog

French trademark law has undergone major changes since the entry into force, on December 11, 2019, of statute No. 2019-486 of May 22, 2019 relating to the growth and transformation of businesses, known as the “Pacte Law”. This statute is supplemented in particular by Ordonnance No.2019-1169 of November 13, 2019 and Decree No. 2019-1316 of December 9, 2019, as well as by two decisions of the Director General of the INPI issued on December 11, 2019 (respectively No.2019-157 and No.2019-158).


The Pacte Law is part of the compliance of French law with the European Union's "Trademarks Package" arising from Directive 2015/2436 adopted on December 16, 2015.


One of the effects of the new provisions introduced by the Pacte Law is the addition of new categories of trademarks eligible for protection, but also new prior rights which may constitute obstacles to the validity of a mark.


In addition, the Pacte Law profoundly changes the opposition proceedings and grants new exclusive jurisdiction to the INPI regarding invalidity and revocation actions against French trademarks.


Some provisions are applicable since December 11, 2019 and others will apply as from April 1, 2020.

 

TRADEMARKS

 

The new provisions introduced in articles L711-1 et seq. of the French Intellectual Property Code are applicable to trademarks registered as from December 11, 2019.

New trademark categories

One of the major contributions of the trademark legal reform is that the requirement for graphic representation has been abandoned.


Article L711-1 of the French Intellectual Property Code now provides that:


“A trademark is a sign used to distinguish the goods or services of a natural or legal person from those of other natural or legal persons.


Such sign shall be able to be represented in the national register of trademarks to allow any person to determine precisely and clearly the object of the protection granted to its owner. "


Thus, this new wording considerably expands the list of categories of signs which are eligible to trademark protection. This list now includes:

  • Word trademarks;
  • Figurative trademarks and figurative trademarks containing word elements;
  • Shape trademarks;
  • Hologram trademarks;
  • Pattern trademarks;
  • Colour trademarks (single colour or combination);
  • Sound trademarks;
  • Motion trademarks;
  • Multimedia trademarks;
  • Position trademarks.

In addition, the new wording of Sections 1 and 2 of Chapter 5, Book VII of the French Intellectual Property Code introduces a change in both the vocabulary and the status of collective trademarks:

  • The “certification trademark” becomes the “trademark of guarantee” in order to avoid confusion with the notion of certification under French law. The guarantee trademark’s regime established by articles L715-1 and seq., is similar to the European Union certification trademark, as to the grounds for invalidity and revocation. The application for a guarantee trademark is filed together with a regulation of use.
  • The “collective trademark”, governed by articles L715-6 and seq. of the same code, is similar to the European Union collective trademark. The application for a collective trademark is filed together with a regulation of use.

New absolute and relative grounds for trademark’s office actions

The legal reform of trademark law introduced the new articles L711-2 and seq. of the French Intellectual Property Code which identify absolute and relative grounds for refusal and invalidity of trademarks.

New absolute grounds for refusal and invalidity of a trademark

Article L711-2 of the French Intellectual Property Code lists all the absolute grounds for refusal and invalidity of a trademark. In addition to the cases which were already provided for under the former regime, this article expressly provides that the following trademarks shall not be validly registered or, if appropriate, shall be cancelled:

  • Trademarks filed in bad faith; 
  • Trademarks on a sign that constitutes a designation of origin, a geographical designation or a traditional mention for protected wines and traditional specialities;
  • Trademarks on a sign that constitutes an earlier denomination of a plant variety.

New relative grounds for refusal and invalidity of a trademark

Articles L711-3 and L711-4 of the French Intellectual Property Code list all of the relative grounds for refusal and invalidity of a trademark, namely prior rights enforceable against a trademark. In particular, this list expressly refers to the following rights:

  • Famous trademarks, beyond the trademark principle of specialty;
  • Domain names;
  • Protected geographical designations;
  • Name, image or reputation of a local authority or public entity.

 

 OPPOSITIONS

 

One of the other major contributions of the trademark legal reform is the creation of a new opposition proceeding (articles L712-4 et seq. of the French Intellectual Property Code) effective against trademark applications filed as from December 11, 2019.

New grounds of opposition

The opposition proceedings against a French trademark application, or against the French designation of an international registration, can now be based on one or more prior rights, provided that all the invoked rights belong to the same owner.

In addition, the new wording of article L712-4 of the French Intellectual Property Code broadens the list of invocable prior rights in the context of an opposition, including in particular:

  • Prior trademarks enjoying a reputation, registered or unregistered;
  • A company name, a trade name, a commercial sign or a domain name;
  • A geographical designation;
  • The name, image or reputation of a local authority or a public entity for inter-municipal cooperation;
  • The name of a public entity.

New opposition proceedings

The new opposition proceedings before the INPI are similar to the existing procedure before the EUIPO (European Union for Intellectual Property Office), insofar as it now includes a purely formal first stage, then an adversarial phase. The new procedure is structured as follows:

1- The opponent may now proceed initially, withing two months of the publication of the contested trademark application, to the filing of a formal notice of opposition.

This formal notice must identify the prior right(s) invoked and the contested trademark application. It shall be accompanied by the payment of opposition fees, namely:

  • 400 euros if the opposition is based on a single prior right;
  • 150 euros for each additional prior right invoked.

2- Secondly, the opponent must file the arguments of the opposition, within one month of the filing of the formal opposition. 

3- Then, the procedure continues with a so-called “adversarial” phase during which the parties are invited to exchange their respective arguments and documents:

  • The applicant will be given an initial period of two months to respond to the opposition arguments;
  • The parties may then exchange several sets of observations within respective deadlines of one month, which are set by notifications from the INPI;
  • The parties can request a presentation of “oral observations” within the framework of a hearing which will be fixed by notification from the INPI if requested;
  • The parties can jointly request up to three suspensions of the proceedings, for periods of 4 months each, which may or may not be cumulative (up to 12 months maximum).

3- The decision is issued within 3 months of the end of the adversarial part of the procedure. If no decision is issued, the opposition shall be deemed to have been rejected. 

New requirements on proof of genuine use of the earlier trademark invoked in the opposition proceedings

Under the new article L712-5-1 of the French Intellectual Property Code, the opposition based on an earlier trademark registered for more than 5 years is rejected when the opponent, at request of the applicant of the contested trademark application, is unable to prove:

  • The genuine use of the trademark invoked for the period of five years preceding the filing or priority date of the contested trademark application,
  • For all the goods and services invoked in the opposition,
  • Or, alternatively, that there were legitimate reasons for its non-use.

 INVALIDITY AND REVOCATION ACTIONS

 

There is now a new administrative procedure before the INPI for invalidity and revocation of registered trademarks, which will be effective from April 1st, 2020.

Thus, the INPI and French Courts now share jurisdiction in matters of invalidity and revocation actions.

Invalidity actions

Regarding invalidity actions, article L716-2 of the French Intellectual Property Code grants an exclusive jurisdiction to the INPI in trademark invalidity actions brought as main cause of action.

In this context, all owners of prior rights as listed in articles L.711-3 and L.716-2 of the French Intellectual Property Code, may act directly before the INPI for invalidity or revocation proceedings. The claimants may be, in particular:

  • The trademark’s owner or its exclusive licensee;
  • The right owner of a corporate name;
  • The right owner of a commercial name or a commercial sign;
  • The right owner of a domain name;
  • The owner of rights deriving from a geographical designation;
  • The right owner of the name of a local authority or a public entity;
  • The right owner of the name of an activity carried out by a legal person under public law.

The INPI will thus hear actions for invalidity both on grounds of absolute invalidity (set out in articles L.711-2, L.715-4 and 7.715-9 of the French Intellectual Property Code) and on grounds of relative invalidity resulting from the existence of said prior rights.

In parallel, French Courts will maintain exclusive jurisdiction to hear invalidity and revocation actions when brought in connection to any other claim, or in a counterclaim falling within the jurisdiction of the Courts (and in particular actions for infringement and unfair competition).

French Courts will however continue to have jurisdiction for invalidity actions brought as a main cause of action, when based on the existence of prior copyrights, design rights and/or personality rights (L. 711-3 6 ° and 8 ° of the French Intellectual Property Code).

Revocation actions

Before the INPI as well as before the French Courts, article L716-3 of the French Intellectual Property Code provides that any interested person is entitled to bring an action for revocation.

From April 1st, 2020, the INPI will be invested with exclusive jurisdiction for all revocation actions brought as a primary cause of action and based on:

  • Revocation, total or partial, for lack of genuine use during an uninterrupted period of 5 years;
  • Revocation of a trademark which has become the usual or generic name to designate all or part of the goods and services covered by its registration;
  • Revocation of a misleading trademark for the public;
  • Revocation of a guarantee trademark or a collective trademark.

Similarly, the INPI will share its jurisdiction with French Courts, which will retain jurisdiction for revocation actions brought as a counterclaim to a main action, for which the Courts have jurisdiction (article L716-3 of the French Intellectual Property Code).

Specific procedure before the INPI for invalidity and revocation actions

When submitting the request for a declaration of invalidity or revocation, compulsory elements must be provided by the applicant:

  • Identity of the applicant and, in the context of an action for invalidity based on prior rights, necessary elements establishing the existence, nature, origin and scope of the prior rights invoked;
  • References of the contested trademark and of the goods and services covered by the application for a declaration of invalidity or revocation;
  • Statement of means – the plaintiff is not obliged to submit arguments in the context of an action for revocation brought for lack of genuine use;
  • Proof of payment to the INPI of the fee EUR 600;
  • If applicable, power of attorney – this power can be communicated to the INPI within one month of the initial request.

This will be followed by an adversarial phase during which the parties will be required to exchange written observations occurring every two months according to a schedule set by the Office. As with opposition proceedings, the INPI will offer the possibility of requesting oral hearings from the parties.

At the end of this adversarial phase, the INPI will have three months from the end of the adversarial phase to issue a decision.

However, this decision may be subject to appeal before the Court of Appeal with jurisdiction over the defendant's place of residence. This appeal must be brought within one month of notification of the decision to the parties. As a reminder, the appointment of a lawyer is compulsory before the Court of Appeal and the appeal is suspensive under the provisions of the French Civil Procedure Code.

The classic appeal procedure will then be put in place, during which the appellant's first conclusions must be submitted within 3 months of the notification of the notice of appeal.

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