One of the main innovations introduced by the “Trademark Package” Directive of 16 December 2015 (2015/2436 EU) is the introduction of an administrative procedure for revocation or declaration of invalidity. Some countries, such as Great Britain or Germany, have already introduced this new scheme into their legislation, but this was not the case in France. As the Directive did not specify how this new procedure must be implemented, the Government undertook this task with its draft project of the “Trademark reform Package”. The draft orders introduce several new articles in the French intellectual property Code (CPI) which aim at regulating how this administrative procedure can be implemented before the National Institute of Industrial Property (INPI).
Until now, pursuant to article R. 712-17 of the CPI, the INPI only addressed the issue of revocation for non-use if it was introduced by a trademark owner in an opposition proceeding. The French draft orders make the INPI competent to judge an application for revocation or invalidity of a trademark in a larger number of cases.
The INPI thus becomes primarily competent to deal with applications for invalidity and revocations of trademarks, even if there is no pending litigation. The courts remain competent to deal with counterclaims, asking the court to revoke or invalidate a trademark, and for applications for invalidity as a principal based on commercial names, domain names or author rights. More generally, courts remain exclusively competent to deal with other civil actions and trademark claims, including related issues of unfair competition. The same applies for invalidity or revocation applications’ presented in a case of an infringement request (as a principal or counterclaim), or when provisional or protective measures are being enforced (Articles L 411-4 and L. 716-5 new).
The administrative procedure before the INPI is provided by the articles L. 716-1 and R. 716-1 to R. 716-11 (new) and includes an adversarial investigation phase. The INPI must decide on the application of invalidity or revocation within three months of the end of this phase, otherwise the application is deemed to have been rejected.
The application for invalidity or revocation submitted to the INPI must include:
– the identity of the applicant;
– the indications allowing to establish the existence, nature, origin and scope of the prior rights invoked;
– the references of the trademark and the goods or services covered by the application for invalidity or revocation;
– the presentation of the means;
– the proof of payment of the fee (within one month);
– the authorization of a potential representative.
This request must be carefully prepared since once it has been made its basis and scope cannot be extended.
The instruction phase begins with the notification to the owner of the contested trademark of the action filed against him. This leads to adversarial exchanges through written observations. These written exchanges between the parties may be punctuated by oral observations. Once the instruction phase has been completed, the INPI decides on the application.
In this respect, all these INPI decisions ruling on an application for revocation or invalidity must be reasoned (Article L. 411-5, new) and may be the subject of an action for invalidity or reform before the French Court of appeals of the applicant’s place of residence (Articles L. 411-4-1 and R. 411-19, new).
With this new administrative procedure, it is no longer mandatory to go to court. However, the invalidity of a trademark is often part of a broader litigation, which may itself concern several titles. Not all the multiple issues thus raised will be within the competence of the INPI. Consequently, the judicial judge will recover exclusive jurisdiction to rule on the case (e.g. if there is a related issue of unfair competition). Although his jurisdiction will be mainly limited to counterclaims for revocation and invalidity, the judicial judge is therefore not entirely set apart from this new procedure. The courts will retain their jurisdiction over the more complex cases, and their role will thus be complementary to the role assigned to the INPI.
Though the INPI is given greater jurisdiction, it is unlikely that the new procedure will be less costly, simpler, and faster and that it will indeed declutter the INPI’s registry from many unused trademark, as it was expected.
To be continued…