The cancellation of a Registered Trademark: the choice between NIIP or court proceedings will soon be available in France

The long awaited reform of trademark law or as it is more commonly known, the “trademark package”, was finally adopted by the European Parliament on 16 December 2016. In an effort to upgrade and adapt the present European legislation with the Internet, this Directive allows Directive 2008/95/CE to be rebuilt.

A trademark is an essential component of the business strategy of a company and it should therefore be protected. The Court of Justice of the European Union recalls in a judgment of the 12 November 2012 that the essential concept of trademark use is to in fact guarantee consumers the true origin of a product or service. (CJEU 12/11/2002 Arsenal Football Club v. Matthew Reed).

Nonetheless the protection of the trademark should not interfere with principles such as the freedom to provide services.

The classic revocation of rights due to non-use

As per Article 16 of Directive 2015/2436 the proprietor of a trademark who, without good reason, has not put the trademark to genuine use in connection with the goods and services in respect of which it is registered for an uninterrupted period of five years, may find the trademark revoked for non-use. However this provision does not apply if there are good reasons for non-use of the trademark.

This is also clear from Article L. 714-5 of the French Code of Intellectual Property, which further provides that “the revocation may be sought in court by any interested person.”

The administrative procedure: an innovative Directive

The Directive (EU) 2015/2436 brings about significant developments in trademark law and revocation of rights arising from non-use. Article 45 provides that: “Without prejudice to the rights of the parties to appeal to the courts, Member States shall provide for an efficient and expeditious administrative procedure before their offices for the revocation or declaration of invalidity of a trade mark.”

The administrative procedure for revocation on the grounds of non-use was already in place in a number of European Union countries. However, other countries such as France simply allowed for the bringing of an action before a court of law.

Following this reform, the National Institute of Industrial Property (NIIP) will now have jurisdiction to decide on a claim for revocation or invalidity of the trademark. Clearly the parties still have the opportunity, if they wish, to bring action before the court.

Until now, revocation for non-use could be invoked before the NIIP only by the defense in opposition proceedings under Article R. 712-17 of the French CPI. To challenge this defense, the opposing party was not required to demonstrate before the INPI that it had made genuine use of the trademark for all the goods invoked in the opposition (Article 712 R -17 para. 2 of the French CPI). It was enough to simply demonstrate genuine use during the last five years of only one of the goods.

When claiming revocation, the trademark owner will not be able to defend himself by merely demonstrating use of only one of the goods and this is due to the combination of Articles 19, 21 and 45 of Directive 2015/2436.

Moreover, Directive 2015/2436 states that the transposition by Member States of the provisions on the administrative procedure for revocation and invalidity benefits from an extensive deadline. Indeed, it is explained in the preamble of the Directive that in order to promote efficiency, “Member States should provide for an administrative procedure for revocation or declaration of invalidity within the longer transposition period of seven years.” Member States must therefore make the necessary changes before 14 January 2023.

With Regard to European trademarks, the EUIPO (formerly “OHIM”) has the jurisdiction to receive applications for revocation by the EU trademark holders. This administrative procedure has already shown its advantages such as its efficiency, speed and cost effectiveness.

Undoubtedly, this development will play a major role in the future with respect to the defense of trademarks.

See our other articles on the topic: European Union: appreciation of evidence of use in revocation proceedings of a trademark