The invalidity procedure has been modified by the provisions of the “Loi Pacte” (in force since December 11, 2019) in particular with regard to its admissibility conditions, which, with respect to the evidence of exploitation of the prior trademark invoked, are twofold:
1. Proof of use of the earlier trademark subject to the obligation to use it
Article L 716-2-3 provides that, subject to inadmissibility, the owner of the earlier trademark on which the action is based must provide proof:
- if the trademark is subject to the legal obligation of use at the date of filing of the nullity action, of the serious use (or a reason for non-use) of the trademark during the five years preceding the date on which the request for invalidity was filed;
and
- if it was subject to an obligation of use on the filing date or priority date of the contested mark, of the serious use (or a reason for non-use) of the mark during the five years preceding the filing date or priority date of the contested mark.
The proof of use must therefore relate to two distinct reference periods.
The last provision may lead to a surprising situation in the event that the challenged mark is very old and the owner of the earlier mark invoked is denied his action on the grounds that he was not using his mark at the filing date of the mark whose invalidity is sought. This would result a prohibition of bringing an invalidity action even though the action is not subject to any prescription!
Finally, for the record, the proof of such use has consequences not only on the admissibility of the action, but also on the scope of the opposability of the invoked trademark, which will be deemed to be registered for each of the goods or services for which serious use has been proven or reasons for non-use have been established only.
2. Evidence of the distinctiveness of the earlier trademark for the purposes of assessing the likelihood of confusion
The new Article L 716-2-4 provides that an application for a declaration of invalidity based on an earlier trademark is inadmissible if that trademark had not acquired a sufficiently distinctive character at the filing date of the challenged trademark likely to justify the existence of a likelihood of confusion.
The question that arises is how this condition of “acquisition of distinctive character” will be assessed.
To our knowledge, no decision has defined this new condition yet, which we interpret as requiring the owner of the earlier trademark to demonstrate that its trademark has been used in such a way that the risk of confusion would have been obvious on the day the contested trademark was filed. This leads to prepare and submit a comprehensive file evidencing the notoriety of the invoked prior mark!
Particular attention must therefore be paid to the ability of the owner of the invoked trademark to prove its use and distinctiveness at these different periods.
Lavoix is at your disposal to assist you in protecting and defending your trademarks in the new invalidity proceedings.