Changes in French trademark law (part 2 - proceedings)

In our previous postIn the previous issue of the newsletter, we informed you of the changes in prices resulting from the transposition of the "Trademark Package" into French law as of December 11, 2019. This new ticket explains the changes in trademark procedures. In particular, they revolutionize the opposition and cancellation of trademarks.

Substantive changes in trademark procedures

The new decree transposes into French law a fundamental reform of trademark law. New procedures will soon be opened at the INPI in order to avoid recourse to the courts. In addition, the graphic representation of the trademark has been abandoned.

Waiver of the obligation to display graphics on filing

It may seem trivial to you, but until now a brand had to be susceptible to graphic representation: a logo, a name, a photo, a color, a hologram, a musical staff... All these brand forms s were visually perceptible and therefore allowed everyone to determine the scope of protection. Today, this obligation of graphic representation is abolished. From now on, the trademark must be "represented in the national register of trademarks in an appropriate form by means of of commonly available technology, provided that it can be represented in this register in a clear, precise, distinct, easily accessible, intelligible, durable and objective manner". In other words, if all the above adjectives are respected (that makes a number of them), the trademark can be registered. In the line of sight: sounds and videos, for which it should now be possible to download a digital file. We also think, in absolute terms, that this should also be possible, according to taste and fragrant (but they are still struggling to be protected).

An enhanced opposition procedure

Until now, only owners of earlier trademarks were able to introduce an opposition in front of the INPI. This procedure is intended to prevent the registration of a new trademark that is too close to an earlier one. If the INPI considers that the application is justified, it is rejected in whole or in part. From now on, opposition is also open to the holders of the following rights: reputed trademark (ie, a registered trademark that is well known to the public and protected beyond the goods and services it covers), well-known trademark (ie, a non-registered trademark that is well known for certain goods and services), company name, trade name, sign, domain name, geographical indication, name/image/name of a local authority, institution, authority or body governed by public law... As well, we will have more time to present the arguments in support of the opposition. This will give us an extra month to send the arguments and documents to the INPI.

New annulment and revocation proceedings before the INPI (French National Institute for Industrial Property)

We've been waiting for them, here they are! From April 2020, you can now have a trademark cancelled before the INPI. This application will have to be based either on a prior right or on the basis of the absence of use. Indeed, a trademark that has not been used for 5 consecutive years following its registration can be cancelled. Previously, these actions had to be brought before the civil courts. This entailed very high costs and a particularly long duration of proceedings. As these procedures are not yet in force, we will tell you more about them in a future post!