Our study of the draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, leads us today to examine the invalidity action. The owner of an earlier mark who is instituting invalidity proceedings may now be opposed by the defendant non-use of the earlier mark. In addition, the invalidity action becomes imprescriptible.
Non-use is a defense in invalidity proceedings
As French law currently stands, a trademark cannot be registered if it consists of:
- a sign which cannot be represented graphically (Article L. 711-1);
- a sign devoid of distinctive character (Article L. 711-2);
- a sign which is contrary to public policy or morality (article L. 711-3);
- or a sign infringing an prior right (Article L. 711-4).
Only the graphical representation requirement is removed by the draft orders. The other conditions of validity of a mark are still grounds for invalidity proceedings. The owner of prior rights may request the invalidation a trademark infringing his rights, while the public prosecutor may request it pursuant to all the other conditions of validity (Article L. 714-3). The owner of a well-known trademark may also initiate invalidity proceedings against a trademark registered subsequently to his own (Article L. 714-4).
The French draft orders introduce the possibility to raise as a defense in invalidity proceedings the non-use of the prior trademark. In other words, the owner of a challenged mark may argue in defense that the earlier mark has not been used seriously for an uninterrupted period of five years. The plaintiff must provide proof of this serious use. Thereupon, there are two scenarios under the new Article L. 716-2-3.
- If the earlier trademark has been registered for more than five years prior to the date of the institution of the invalidity proceedings, but less than five years before the filing of the later trademark: the owner of the mark thus challenged must provide proof of serious use during the five years preceding his application or provide adequate reasons for this non-use;
- If the earlier trademark has been registered for more than five years at the time that the later trademark is filed: the owner of the mark thus challenged will have to provide proof of serious use for the five years preceding the filing of the prior trademark and during the five years preceding his application. Here again, only adequate reasons for its non-use will be able to excuse lack of serious use.
Invalidity proceedings become imprescriptible
Invalidity proceedings are currently subject to the ordinary law prescription provided by article 2224 of the French Civil Code, namely “five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right”. Article L. 714-3 of the French Intellectual Property Code furthermore states that a trademark owner cannot institute invalidity proceedings if the contested trademark “was filed in good faith and if he had tolerated its use for five years”.
The French draft orders make invalidity proceedings imprescriptible in a new Article L. 716-2-6. Only well-known trademarks, within the meaning of Article 6bis of the Paris Convention, will remain subject to a statute of limitations of five years from the date of registration, unless the application has been made in bad faith (Article L. 716-2-7, new).
It can be argued that making invalidity proceedings imprescriptible weakens the rights of trademark owners because their rights can be challenged at any time..
The new measures put in place by the French draft orders transposing the “trademark reform package” must therefore encourage trademark owners to check with great care the validity of their sign before registering it as a trademark.
To be continued…