France: Trademark application and renewal: the silence of the French National Institute of Intellectual Property (INPI) equals rejection

The recent French Law enabling the government to streamline relations between public administration and the public (loi n° 2013-1005 du 12 novembre 2013, habilitant le gouvernement à simplifier les relations entre l’administration et les citoyens) amended article 21 of the Law on the rights of the public in its relations with public administration (loi n° 2000-321 du 12 avril 2000 relative aux droit des citoyens dans leurs relations avec l’administration), to the effect that the lack of reply of any government agency amounts to acceptance of the request made to such agency. However, the 2013 Law authorized the government to provide for exceptions to this principle. The Decree (décret n° 2014-1280) of 23 October 2014 thus provided that for certain decisions regarding industrial property titles (in particular applications for trademark registration and renewal as well as oppositions) the lack of reply of the administration is tantamount to rejection. This Decree raised some uncertainties as to its enforcement and compliance with the provisions of the Code de la propriété intellectuelle (CPI). Fortunately, a Decree (décret n° 2015-511du 7 mai 2015), modifying the CPI, has addressed these uncertainties.

Regarding the registration of trademarks, the new articles R. 712-24-1 and R.* 712-23-2 of the CPI provides that trademark registration requests result in an implied decision of rejection at the end of a 6 months’ period starting from the request, which may be interrupted in the case of an opposition or notification of irregularity. Until now, the National Institute of Intellectual property (INPI) had to decide upon substantive objections within 4 months (R 712-11 CPI), which remains unchanged. But the INPI is now also subject to a deadline for the establishment a formal objection.

It would appear that receipt of the certificate is required to validate the application. As for the INPI’s implied decisions of rejection, they do not need to be substantiated. In order to know the reasons why the request was rejected, applicants will have to refer the matter to a judge who will order INPI to render a decision. However, this should not happen since INPI will normally manifest itself before the 6 months’ deadline to formulate objections. These objections will interrupt the 6 months’ period at the end of which the INPI’s silence would imply rejection. It is deeply unfortunate that said reform has brought no modifications regarding the rest of the procedure. In fact, the INPI is not subject to any deadline when deciding about the response to the applicant’s objection. Yet the INPI’s response times often exceed 2 years.

Regarding trademark renewal requests, the Decree inserts, after article R. 712-23 CPI, articles R. 712-23-1 and R.* 712-23-2 which provide that trademark renewal requests lead to implied decisions of rejection at the end of a 6 months’ period starting from the renewal request which can be interrupted in the case of a notification of irregularity, in the same way as for trademark applications.

As a result of these new provisions, the strategy regarding the applications and renewals of trademarks should be modified and the receipt of application and renewal certificates should be systematically checked before the 6 months’ deadline. The Decree of 7 May 2015 entered into force on 9 May 2015 and is applicable to prior requests that have not been subject to any express decision yet. Great carefulness is thus recommended regarding these requests. Whilst this reform helps accelerating procedures, its disadvantage is that it increases the amount of time required to properly manage each trademark.

Similarly, it is now provided that in the absence of an express decision within 6 months, the design registration or renewal applications are deemed to be rejected.

As regards patent,, to ensure consistency between legislations, this Decree abolishes the 4 months period after which the silence of the INPI amounts to rejection of the patent application. Indeed, the CPI provides for the publication of applications 18 months after filing, which is incompatible with an implied decision of rejection within 4 months of the request. However, the silence of INPI kept during 12 months continues to equals rejection in respect of waiver or limitation requests.

Appropriate strategies now have to be adopted in line with this clarified legal framework.