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….

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