Trademark reform package – Changes in the opposition procedure : formal rules (Part II.)

Continuing the review of the changes in the opposition procedure made by the French draft orders transposing the “Trademark reform package”, we will now focus on the conduct of the procedure.

 

The conduct of the amended opposition procedure

 

 

An opposition procedure has been provided for a long time by Article L 712-5, but it is rather concise, as it merely states that the procedure must be contradictory. The procedure itself is detailed in Article R 712-16. It specifies that the opposition must be notified without delay and gives the applicant two months at least to submit his observations and to possibly choose a representative. The parties may then submit their observations during a period of at least two months, subject to any closures or suspensions. The National Institute of Industrial Property (INPI) then publishes its decision.  Though the article R 712-16 indeed indicates that the draft decision is notified to the parties so that they may challenge it if they wish to do so, no indication is provided as to the duration of this period or even how many comments may be  submitted. Emphasis is placed on respecting the right to be heard, as shown by the obligation for the parties to notify any comments f to the other.

 

In order to comply with the “Trademark Package” directive, the French government has drafted a new article L. 712-5 and a new article R. 712-16-1, which both detail the stages of the opposition procedure.

 

Firstly, an investigation phase allows the opponent and the applicant of the contested trademark to debate. The opposition is notified to the applicant, who then has two months following the publication of the registration to submit written observations. He must also provide his identity and the information required to establish the existence, nature, origin and scope of his rights, the references to the application for registration, the disputed goods and/or services, the fee payment receipt, and the power of attorney of his representative, if applicable. The changes thus made are about the delay granted for providing these various documents, which can be extended by one month, except for the communication of the fee payment receipt. Previously, the deadline was two months for all of these documents, except for the power of attorney, which had to be provided within one month.

 

Furthermore, the applicant may ask the opponent to produce documents establishing that his trademark has been genuinely used, if it has been registered for more than five years. In such a case, the opponent has one month to submit his comments and to contest any documents he may have received. A third and final adversarial exchange of one month may then take place, without the possibility, however, of raising new claims.

Oral observations may be presented during this time, in accordance with the procedures laid down by the Director General of the INPI.

 

Finally, a decision on the opposition is taken within three months. Failing this, this, the opposition is deemed to have been rejected (this period may be suspended, as provided for in the new Article R. 712-17.

 

As a result, the opposition procedure is now circumscribed in clearly defined delays. The number of exchanges between the parties, as well as the time allowed to provide documents for the file, or observations, is limited in a concern of speed and efficiency.

 

The opposition procedure would thus evolve both as regards its conduct, which is now specified and clarified, and in regards to the rights which may be invoked, and their holders. The changes would allow French law to take into account development in practice by giving priority to the protection of holders of previous rights.

 

To be continued…

 

 

Trademark reform package – Changes in the opposition procedure : substantive rules (Part I.)

Among the changes made by the French draft orders transposing the “Trademark reform package”, in addition to deleting the graphic representation requirement and the expansion of grounds for refusing an application, is the modification of the opposition procedure.

Thus, the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 requires, above all, a rapid and efficient procedure, but does not detail which steps must be taken to this effect. However, article 5 of the Directive details the rights, which may be invoked.  In its draft orders, the French government plans to extend the prior rights that may be invoked and to modify the opposition procedure, which will lead to a modification of the French Intellectual Property Code.

 

The extension of prior rights that may be invoked

As the law currently stands, an application for opposition to the registration of a trademark must be filed within two months (Article L. 712-3 of the French Intellectual Property Code, referring to Article L. 712-4 of the same Code), by clearly identified persons and must invoke prior rights. In this respect, Article L. 712-4 of the French Intellectual Property Code provides that an opposition may be formulated by:

 

(…) 1° the owner of a mark that has been registered or applied for at an earlier date or which enjoys an earlier priority date or by the owner of an earlier well-known mark ;

 1° bis The Director of the National Institute of Origin and Quality, where there is a risk of damage to the name, image, reputation or notoriety of a designation of origin or geographical indication (…);

 2° The beneficiary of an exclusive right of exploitation, unless otherwise stipulated in the contract ;

 3° A territorial community under h of Article L. 711-4 or under an infringement of a geographical indication defined in Article L. 721-2, therefore that this indication includes the name of the community concerned ;

 4° A defense and management organization mentioned in Article L. 721-4 which  geographical indication has been approved in application of  Article L. 721-3 or whose application for approval is being examined by the Institute (…)”

 

The previous rights that may be protected by a territorial community under paragraph 3 are its name, image and reputation as well as geographical indications, as defined by Article L 721-2 of the French Intellectual Property Code, which contain the name of the territorial community. The geographical indications defense and management organization referred to in paragraph 4 is a private legal entity.

 

In its draft orders, the French government has chosen to treat separately the rights that may be invoked and the rights holders who may file an opposition: the new Article L. 712-4 of the French Intellectual Property Code focuses on the former, while the new Article L. 712-4-1 deals with the latter. This change of form is accompanied by a change of substance. The rights that may be invoked are extended, which has repercussions on the holders who can act. In this regard, it follows that:

 

– The existence of an earlier famous trademark, that is to say a trademark which is known worldwide, may be invoked in an opposition procedure;

Any legal person may invoke the existence of a legal name or a company name if there is a risk of confusion  in the public’s mind;

– Any public legal person may report an infringement of the name, image or reputation of a public institution or authority, or of a body governed by public law.

– The existence of a trademark protected in a State member of the Paris Convention may be invoked in an opposition procedure.

 

Furthermore, changes have been made regarding the rights that can already be invoked. Approved or registered geographical indications can be invoked, but the law no longer refers to infringement of their name, image or reputation. This change is welcome since a geographical indication is a name used to designate a specific product, and thus it can hardly claim to have a name, an image and even less a reputation. Indeed, only the entity or the territory to which this name is attached can claim it. This expression is therefore reserved for infringement to the rights of a territorial community, institution, authority or a public organization.

In this respect, the draft orders also allow any person exercising his rights over an approved or a registered geographical indication to file an opposition. As the text is not specific, it may be a physical person or a legal entity, such as territorial communities, if their name is being used.

However, designations of origin are no longer mentioned in the new wording of the Article L. 712-4. Today, this term refers to several sub-categories. It is therefore likely that it will be included in geographical indications, as the aim in both cases is to guarantee quality and to recognize a place of production or know-how specific to a particular region.

Moreover, opposition to an application for registration may now be filed by the owner of a trademark, which was registered without his authorization, in the name of his agent or representative. This add-on thus takes this particular practice into account to protect the interests of the trademark holder. Until now, Article R712-13 provided the possibility for a holder to act through a representative, but did not consider that the latter could act without authorization. Besides, the French Intellectual Property Code did not provide any guidelines in such a case.

Finally, it should be noted that, from now on, several of these rights can be invoked at the same time in a sole opposition procedure. It will be necessary, however, that they belong to a single holder, or that the various holders have appointed a common representative (new Article R. 712-13), and that the goods and/or services of the trademarks are at least partly identical to those of the contested trademark.

To be continued….

Amendments introduced to the Czech Trademark Law Act

The Czech Republic has recently amended its Trademark law in order to transpose the EU directive of 16 December 2015 (2015/2436 UE) and integrate these legal provisions into its legislative system. The legal provisions came into force on 1 January 2019.

Various amendments have been made to the Czech law, the main ones are discussed below.

The requirement of graphic representation of the trademark has been removed. It is now possible to register a trademark provided that it can be represented by any existing technological means such as MP3 files. Hence, in addition to the registration of a word trademark, semi-figurative trademark or figurative trademark, it is now possible to register a sound trademark, a position trademark, a shape trademark, a colour trademark, a movement trademark, or a hologram trademark, for example.

Moreover, it is no longer possible to register a trademark for goods and services whose title is too broad, for example by using a title from the Nice classification or by using a term that is too general.

In addition, the Czech trademark office previously carried out a search among prior trademarks registered for identical goods or services. From now on, it is no longer the case. Henceforth, it is now up to the trademark owner to set up a monitoring for its trademarks and to file an opposition within the time limit.

Furthermore, amendments regarding the opposition proceeding have also been introduced.  The possibility to request the opponent to provide proof of use in opposition proceedings has been introduced for trademarks that have been registered for more than 5 years. The applicant has a period of two months from the notification of the opposition in order to make such a request. The evidence must be filed by the opponent within 4 months from the request of proof of use.

Finally, changes relating to counterfeiting have also been introduced with this reform in order to provide better protection against counterfeiting. For instance, the owner of prior trademark rights can prevent importation of goods whose main characteristics resemble his prior trademarks before these products are released for free circulation in Czech Republic.

Trademark law in the European Union is becoming increasingly uniform. However, there are still some specific features that need to be taken into account. Dreyfus is a specialist in trademark protection and defense strategy in the European Union. Our IP boutique law firm can develop a strategy tailored to your needs.