The “LOI PACTE”, adopted by French Parliament on April 11 and validated by the Constitutional Council on 16 May, was promulgated on May 22, 2019.
This law authorizes the Government to take by ordinance the necessary measures to transpose Directive (EU) 2015/2436 of December 16, 2015 on the trademark reform package (“Trademark Package”).
This ordinance must be adopted before November 22 and must still be followed by a ratification law within 6 months from the publication of this ordinance.
Consequently, we can expect the provisions of the “Trademark Package” will become effective in 2020.
As a reminder, the “Trademark Package” substantially modifies trademark law in France, in particular with regard to opposition proceedings (I) but also actions relating to trademark invalidity and revocation (II).
I. Modification of the opposition proceedings before the French intellectual property office (INPI)
1) Extension of prior rights that may serve as a basis for an opposition
To date, it is only possible to file an opposition before the INPI based on a prior trademark (registered or well-known unregistered), on a territorial authority name, a geographical indication or a designation of origin. With this reform, other prior rights can serve as a basis for a trademark opposition proceeding :
- A reputed trademark, when the contested trademark would take unfair advantage of, or be detrimental to the earlier reputed trademark ;
- A trade or company name, if there is a likelihood of confusion for the public ;
- The image or reputation of a local authority ;
- The name, image or reputation of an institution, authority or bodies governed by public law.
*However, the domain name will still not constitute a valid basis for opposition.
2) Possibility to base an opposition on several rights simultaneously
Today, opposition proceedings can be based on one right only. If several rights must be invoked, it is necessary to file as many oppositions as there are prior rights invoked. With this reform, it will be possible to base an opposition on several prior rights, provided that they belong to the same owner.
3) Modification of the rules for assessing the use of the prior trademark
To date, if proofs of use are requested, the opponent is required to demonstrate the use of his trademark for at least one of the goods or services on which the opposition is based and the French office has very limited discretionary power. With the reform, the owner of the prior trademark will have to prove the use of his trademark for each product or service invoked in his opposition and the French office will have a real discretionary power.
4) Introduction of a formal opposition
Currently, all arguments and documents must be filed with the opposition notice before the opposition deadline.
With the reform, it will be possible to file a formal opposition, with the obligation to submit the grounds and supporting documents within one month from the expiry of the opposition period.
The opposition proceeding before the INPI is undergoing major changes and is approaching to the procedure in force before the EUIPO. On the one hand, we note a flexibility of the procedure (possible new prior rights, possibility of invoking several rights, formal opposition) and on the other hand a strengthening of the INPI's powers.
II. Reform of trademark cancellation proceedings in France
Today, nine High Courts have jurisdiction in France to hear actions relating to trademark invalidity and revocation. However, the transposition of the EU’s recent trademark reforms will shake up this system.
The purpose of these reforms is to simplify the procedures for bringing an action for invalidity or revocation (for non-use) by introducing an administrative procedure before the French intellectual property office (INPI).
INPI will thus have exclusive jurisdiction to hear actions for invalidity brought as a principal cause of action either :
- on grounds of absolute invalidity (substantive conditions of protection, eg lack of distinctive character, misleading character, etc.) or
- on grounds of relative invalidity based on the existence of the following prior rights: trademarks, company or corporate names, geographical indications, names of territorial authoritys or names of public bodies.
Consequences : actions for invalidity formulated by way of a counterclaim and/or based on relative grounds other than those listed above will remain within the jurisdiction of the High Courts mentioned above.
As for actions for revocation (for non-use), INPI will have jurisdiction where such an action is brought as a principal cause of action.
Disputes already pending at the time of the EU reforms will remain within the jurisdiction of the courts.
Moreover, actions before INPI will be more accessible as :
- invalidity actions will no longer be subject to any limitation period (except against so-called "well-known" trademarks). However, extinction of rights due to acquiescence will remain applicable.
- plaintiff will no longer be required to demonstrate standing, that is an interest in bringing an invalidity or revocation action.
Unlike the opposition procedure, INPI may order the losing party to pay a lump sum to the other party.
Finally, INPI’s decisions may be appealed to the Court of Appeal, according to a specific procedure.
This simplification of the procedure for bringing an action for invalidity or revocation is intended to clear trademark registers that are presently cluttered with dormant rights.
Trademark owners will therefore need to be particularly careful to use their trademarks and to keep proof thereof : defensive trademarks should therefore no longer have a future !
On the other hand, organising rights clearance before the launch of a new brand will probably be cheaper and more accessible, to the great benefit of applicants.