The paramount importance of the status of entries in the National Trademarks Register when the time comes to renew a French trademark – Court of Appeal of Paris, Pole 5 – Chamber 1 – Decision of November 28, 2017- 17/07732

L’importance de l’état des inscriptions au Registre national des marques au moment de la demande de renouvellement d’une marque française.In France, although it might appear surprising for foreign observers, very specific requirements have to be met when the time comes to ask for the renewal of a French trademark before the French National Institute of Intellectual Property (NIIP). Thus, one of the most primordial requirements is the confirmation that the trademark owner who appears on the national trademarks Register is indeed the same entity as the one filing the French trademark renewal application. If such is not the case, the consequences can be dire.

The company C BECAUSE TV has suffered a bitter experience in that regard and, hadn’t it been for the judgement issued by the Court of Appeal of Paris on November 28, 2017, the economical aftereffects of failing to meet the aforementioned requirement could have been dramatic for this company. In this matter: the company C BECAUSE TV became the owner, following a deed of cession signed on February 22, 2016, of two French trademarks. One of these two trademarks is the trademark ‘CULTURE PUB’ whose protection was expiring on June 10, 2016.

On September 20, 2016, the company C BECAUSE TV filed a fast track application before the NIIP in order to have the deed of assignment appear on the trademark’s status on the French national trademarks Register. A few days later, on September 20, 2016 the company filed a renewal application for the trademark ‘CULTURE PUB’ within the six months’ time frame of the grace period, in its own name as the de facto new owner. Nonetheless, the fast track application filed on September 16, 2016 had not yet resulted in the modification of the status of entries in the National Trademarks Register. Hence, on the day of the filing of the renewal application for the trademark ‘CULTURE PUB’, the company C BECAUSE TV did not appear as the registered trademark owner on the French National Trademarks Register. Consequently, the Director General of the NIIP declared that the renewal application for the trademark ‘CULTURE PUB’ was inadmissible.

However, the NIIP having a tendency to lag behind a bit, this inadmissibility decision was not notified to the company C BECAUSE TV before February 13, 2017. Therefore, the company found itself to be in a very problematic situation since it was unable to submit effectively any observation in reply to the inadmissibility decision insofar as the grace period was expired by then. It is in this context that the decision of the Court of Appeal of Paris issued on November 28, 2017 occurs.

The Court stated in its decision that the inadmissibility of a renewal application could not be pronounced in a case where the applicant had not been able to submit any observation in reply. Accordingly, and taking into consideration the seriousness of the economic consequences that might have arisen from the non-renewal of the trademark ‘CULTURE PUB’, the Court cancelled the NIIP inadmissibility decision.

This case highlights the great importance of the status of entries in the National Trademarks Register when one applies for a French trademark renewal. The extreme severity attached to the status of entries is only counterbalanced in the case at hand by the protection of the rights of the defence, in particular the right for the applicant to be able to effectively submit observations in reply.

Contributor: Nathalie Dreyfus, Trademarks Attorney