The opposition procedure before the INPI: the rules of form to be respected

  The opposition procedure was created by the law of 4 January 1991. It allows a trademark owner to oppose the registration of a new trademark by acting directly before the INPI. Previously, it was only possible to act before the courts (for much higher costs and delays). This administrative procedure has been designed to be simple and quick. However, in order to give the opposition every chance of success, certain rules must be observed.  

Who / When / How: questions to ask before any opposition

Since 2016, all opposition requests must be made online, at the opposition portal of the INPI. In order to be valid, the opposition must be made in an 2 month delay after publication of the contested mark. Only the proprietor of a previous trademark may file an objection. Please note: the name of the proprietor entered in the National Register of Trademarks must correspond to that of the person who is going to act in opposition. It is therefore necessary to ensure that the information entered in the register is correct (for more information on post-filing trademark amendments, read our registration article). Local and regional authorities and bodies in charge of geographical indications also have the capacity to act.  

Paying attention to details in opposition

The INPI is very demanding when examining the admissibility of an opposition. Indeed, an error in one of the following categories can be fatal to your opposition.

Properly identify the opponent

When filling in the opposition form, you should be very careful in giving information about the opponent. Always check that the required information (surname, first name, company name, legal form, address) is correct. Entering the company's trade name instead of the company name may thus lead to the inadmissibility of the proceedings.

Join the brands concerned

The opposition must include a copy of the application for registration of the contested mark and a copy of the earlier mark. When preparing your registration file, do not forget these two documents, which are considered indispensable by the INPI.  

Keeping proof of use of your trademark

During opposition proceedings, the proprietor of the earlier mark may be required to prove that his trademark is being used. This condition only applies to trademarks registered more than 5 years ago. An unused trademark may lead to the closure of the opposition proceedings. Therefore, before initiating opposition proceedings, make sure you have several proofs of use. In particular, these must prove that there is use of the trademark on French territory.  

Complete file: procedure triggered

Once your file is completed and the opposition fee has been paid (325€), the INPI will examine the formal requirements. If the file is in order, the INPI will inform the applicant that an opposition has been filed against his application for registration. The applicant will obtain access to the portal, where he will be able to access the opposition. He will have to submit his observations within 2 months. If he does not respond, the INPI will issue a final decision. Conversely, if the opponent presents arguments, the INPI will draw up a draft decision, to which it will be possible to respond. In the absence of a response, the draft will become the final decision. While the opposition procedure is easy to understand, the INPI recommends that you use a professional representativeHe is accustomed to legal technicality and to the conditions of admissibility of the procedure. Therefore, do not hesitate to ask for assistance in your opposition proceedings.