Trademark reform package soon to be adopted in France

On February 15 the French Government published draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 known as the “Trademark reform Package”. This Directive aims to harmonize and modernize trademark law in the EU Member States.

This reform, which came into force on March 23, 2016 led to the adoption of two new legislative texts:

The draft orders were published one month late, on February 15. Major changes are made to the legislative and regulatory parts of the Intellectual Property Code as well as the Judicial Organization Code and the Consumer Code.

It is therefore essential to outline the main changes that could affect French Intellectual Property Code.

The grounds for refusing an application for registration are expanded. In addition to  signs that are contrary to public policy or morality, and signs that provide misleading information on the quality of a product or service that were already excluded from registration, the order now includes grounds such as:

  • Appellations of origin
  • Geographical indications
  • Previously registered plant variety denominations
  • Applications made in bad faith by the applicant

These grounds for refusing an application for registration are now expressly included in modified article L. 711-3 of the French Intellectual Property Code.

Being in line with the objective of the “Trademark reform Package”, the draft order abolishes some of the national French law peculiarities, bringing it in line with the EU law. Thus, the graphic representation requirement in Article L. 711-1 is abolished. It should therefore be possible to register sound trademarks, multimedia trademarks, motion trademarks, etc. in the same way as for European Trade Mark since 2017 before the EUIPO (European Union Intellectual Property Office).

Similarly, the opposition procedure against a trademark protected in France is modified to become more similar to European Trademark Office (EUIPO) opposition procedures.

Prior rights that may be invoked in an opposition are extended – Amendment of Article L. 712-4 of the Intellectual Property Code. From now on, an opposition action against a registration application may be based on:

  • A well-known trademark or a notorious trademark, when the trademark in dispute is likely to unfairly take advantage from the reputation of the trademark or cause prejudice thereto
  • A company name or a trade name
  • A geographical indication
  • The name, image or reputation of local authorities, institutions or public law bodies .

The draft order adds that an opposition may be based on several rights pertaining to the same owner as it is already the case in opposition proceedings before the EUIPO for European Union trademarks.

The opposition procedure is also modified. For a period of two months following the publication of the application for registration, a formal opposition to the application for registration may be filed before the INPI in the event of infringement of one of the earlier rights. However, the draft amends articles L. 712-4 and R. 712-14 of the French Intellectual Property Code: in addition to the usual period of formal opposition, the opponent has one additional month to provide the statement of the grounds on which the opposition is based, as well as certain documents identifying the parties.

The decision will be rendered after an adversarial procedure that includes an investigation phase involving a debate between the opponent and the owner of the contested application for registration.

The regime for the protection of certification trademarks and collective trademarks is amended – Amendment of Articles L. 715-1 et seq. The draft order indeed introduces new articles relating to the regime for the two above-mentioned types of trademarks.

Disputes concerning invalidity or revocation of trademarks are specified. Articles L. 716-1 to L. 716-5 are amended, and renamed, and the draft order proposes the following changes:

  • An action for invalidity filed by the owner of an earlier trademark may be rejected if, at the request of the owner of the later trademark, he cannot prove genuine use of the earlier trademark during the five years preceding the action.. Lack of use of prior trademark will become an argument in defense against an action for a declaration of invalidity of a trademark.
  • Invalidity actions become imprescriptible (Article L. 716-2-6) with the exception of actions based on well-known trademarks within the definition of the Paris Convention (Article 6 bis) which are time-barred after 5 years from the registration date of the contested trademark with the exception of tolerance of the subsequent trademark by the owner of the prior rights for a period of no less than 5 years.
  • Clarification of the starting point for the prescription of infringement proceedings. According to new article L. 716-4-2, it is 5 years as of the day on which the holder of a right knew or should have known about the last act of counterfeiting enabling him to exercise it.

It should also be mentioned that the amendment of Article L. 714-5 specifies the starting point of the period of disqualification for non-use. Although the duration of the period of non-use was defined before (i.e. 5 years), the starting point of the period was hard to determine due to differences in interpretation in the case law. The draft thus explicitly sets the rules for calculating the deadline for a revocation stating that it should be calculated starting (at the earliest) from the date of publication of the trademark registration.

The procedure for filing an action for invalidity or revocation of a trademark is simplified with the introduction of an administrative procedure before the INPI. Article L. 713-6 becomes article L. 716-5.

Thus, revocation actions and invalidity actions filed as a principal action (and where the action for invalidity is exclusively based on grounds of absolute invalidity or certain grounds of relative invalidity) will now be exclusively submitted to the INPI, unless some judicial litigation is already pending between the parties. In that case, the judge will remain exclusively competent. Similarly, other civil actions and trademark claims, such as invalidity actions and revocation actions filed as counterclaims, will remain under the exclusive jurisdiction of the competent courts (Tribunal de Grande Instance).

This new procedure before the INPI should come into force in the first quarter of 2020.

Finally, the last notable point of the draft order is the modification of the renewal date of a French trademark, included in modified article R. 712-24. In principle, a trademark may be renewed until the last day of the month when it expires, and within an additional grace period of six months. The draft order provides that the request for renewal can be made, at the earliest, one year before the expiry of a trademark, and at the latest within an additional period of six months from the day after the expiry date for an extra fee.

This is probably the biggest reform of French national trademark law since the law of January 4, 1991 transposing the 1988 Directive. Although the draft orders have not yet been validated, it is nevertheless subject to public consultation. Various IP associations involved in the consultation had to propose their amendments before March 20, 2019. The final draft order of the “Trademark reform Package” should be adopted within 3 months.