The Order No 2019-1169 of 13th November 2019, incorporating the provisions of Directive (EU) 2015/2436 of 16 December 2015, has been applicable since 11 December and has introduced important changes in the French law.
First, the requirement of a graphic representation has been abandoned in order to make the application of “non-traditional” trademarks possible by updated technical means. New official fees are applicable with the possibility to file and renew for one class only. Also, the absolute grounds for refusal now include Appellations of origin, geographical indications, traditional terms for wine and traditional specialities guaranteed, and earlier plant variety denominations. In addition, provisions relating to collective trademarks are amended and certification trademarks are superseded by guarantee trademarks.
Proofs of use are now to be provided for the five-year period preceding the application date of the opposed trademark and for all the goods or services which serve as the basis of the opposition.
The opposition procedure is now available to new prior rights: company names, commercial names and domain names which do not apply only locally; if there exists a likelihood of confusion for the public; and, reputed trademarks, when the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark.
The opposition procedure is also opened to public entities when the later trademark is detrimental to their name, image or repute or if there is a likelihood of confusion for the public. Opposition can also be filed against trademarks that are filed in their own name by an agent or representative of the proprietor of the earlier trademark without authorization from the respective person. In addition, several earlier rights may be invoked in one opposition procedure.
Proofs of use are now to be provided for the five-year period preceding the application date of the opposed trademark and for all the goods or services which serve as the basis of the opposition.
Non-use of a trademark has new consequences: The action in invalidity is inadmissible if, on request of the defendant, it cannot be proved that the prior trademark was used during the five-year period preceding the date of the action, or that there are proper reasons for non-use.
Procedural rules have been amended, including the possibility of filing several submissions and additional documents during the now maximum nine months opposition procedure.
These new provisions have been applicable against trademark application filed as from the 11th of December 2019.
Provisions relating to invalidity or revocation procedures has also entered into force on 1 April 2020.
The French PTO now has exclusive jurisdiction regarding primary actions based on absolute grounds or on the invalidity of non-use. No interest to act is required from the demanding party. The office still shares jurisdiction with Courts regarding actions based on relative grounds of invalidity. The courts remain competent in a case where there is a connected issue of unfair competition, and remain exclusively competent regarding infringement actions, and investigative, interim or provisional measures.
The application for invalidity can be based on several grounds and/or rights. The procedure is detailed in an application decree.
Non-use of a trademark has new consequences: The action in invalidity is inadmissible if, on request of the defendant, it cannot be proved that the prior trademark was used during the five-year period preceding the date of the action, or that there are proper reasons for non-use. This is also the case if the earlier trademark has been registered for more than five years, and if its owner cannot prove that their trademark was used during the five-year period preceding the application date of the later trademark, or that there were proper reasons for non-use.
The limitation period for infringement actions will now be five years from the day the right holder knew or should have known the last fact enabling him to exercise his right.
Similar provisions apply to reputed trademarks or trademarks for which distinctiveness was acquired through use.
There is no more limitation period attached to invalidity actions, with the exception of actions based on well-known trademarks in the sense of Article 6bis of the Paris Convention, for which there is a five year limitation period, except in the case of bad faith. However, the invalidity action will be inadmissible if the applicant knew the later registered trademark and has tolerated its use for five years.
The infringement action is extended to also cover the offer, the placing on the market or the possession notably of packaging, labels, marks or any other support on which the trademark is attached and merchandise in transit. The limitation period for infringement actions will now be five years from the day the right holder knew or should have known the last fact enabling him to exercise his right.
The French PTO has been working on the implementation of the invalidation procedures by recruiting and training new people. Despite the Health Emergency State, they will be available at the predicted date of 1st April. We will see soon if professionals adopt and make them theirs.
Aurélia Marie
Partner
www.bdl-ip.com
amarie@bdl-ip.com
+33 (0)1 44 18 89 00
Aurélia Marie is Head of the firm’s trademarks, designs, domain names and copyright department. She specialises in the law of distinctive signs (trademarks, company names, trade names, domain names, etc.), designs and copyright, both as regards acquiring such rights and exploiting them. She also has wide expertise in conducting due diligence reviews on portfolios of trademarks and designs, contracts, advertising law and unfair competition.
