In the dynamic landscape of intellectual property law, opposition and cancellation proceedings serve as vital instruments for ensuring trademark registries maintain integrity and relevance. In 2024, the INPI (Institut National de la Propriété Industrielle) and French courts delivered landmark decisions that clarified procedural subtleties and substantive grounds for action. This article explores key decisions, offering practitioners and businesses critical insights into the latest trends shaping French IP litigation.

Key procedural elements

Non-use cancellation and evidence requirements

Cancellation for non-use remains a critical aspect of trademark disputes. Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This leniency underscores the need for comprehensive and detailed records of use.

However, the geographical scope of use remains tightly interpreted. For instance, evidence targeting a non-French market (Swiss company) in English were deemed insufficient to establish French usage (INPI, 11 March 2024, Bureau d’Idées), reminding trademark holders of the importance of local relevance.

Procedural standing and abuse of rights

A consistent theme in 2024 decisions is the public interest nature of cancellation proceedings, obviating the need for claimants to demonstrate personal interest. This principle highlights the role of such proceedings in ensuring the integrity of trademark registries and was reaffirmed in CA Paris, 24 April 2024, Vape, which emphasized the role of these actions in cleansing the registry.

Claims of abuse of rights require substantial evidence of malicious intent. In MySunbed (INPI, 27 May 2024), the INPI rejected bad faith allegations where the claimant’s actions were not clearly aimed at harming the trademark holder, setting a high bar for abuse-related defenses.

Temporal scope and legal framework

The temporal application of law remains pivotal in cancellation actions. Decisions such as Cavalride (INPI, 3 April 2024) reiterated that trademarks are assessed based on the legal framework at their filing date, making historical legal research an indispensable tool for practitioners.

Expanded grounds for invalidity

Distinctiveness, deceptiveness, and public order

Distinctiveness remains a cornerstone of trademark registrability. The MySunbed case (27 May 2024) highlighted the evolving standards of consumer perception, particularly concerning basic English terms used in France (INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).

Public order considerations were addressed in cases like NL 23-0089, where the INPI dismissed claims that a trademark contravened legal restrictions, focusing on whether actual prohibitions existed at the time of filing (INPI, 18 March 2024).

Renown and parasitic intentions

Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).

Recent case-law trends in French IP litigation

French IP precedent in 2024 reveals a pro-business tilt, particularly in its evidentiary flexibility for proving use. However, the INPI’s stringent standards for distinctiveness and renown ensure that frivolous registrations face robust scrutiny. This balanced approach promotes a competitive yet fair trademark ecosystem.

Additionally, courts have shown increasing sophistication in addressing linguistic and cultural nuances. The La Chicha Loca case, for instance, highlighted the growing recognition of diverse public perceptions based on regional language comprehension (INPI, 26 January 2024).

Conclusion

The decisions of 2024 underscore the importance of strategic preparation in opposition and cancellation proceedings. Practitioners must anticipate evidentiary hurdles, leverage historical legal contexts, and adapt arguments to evolving standards of distinctiveness and public perception. Key takeaways include:

  • The INPI increasingly emphasizes public interest in cancellation actions.
  • Successful cancellation claims demand comprehensive, evidence-backed arguments, particularly regarding distinctiveness and renown.
  • Cultural and linguistic contexts play a growing role in trademark disputes.

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Nathalie Dreyfus with the assistance of the entire Dreyfus team.

FAQ

1. What is the difference between opposition proceedings and an action for invalidity?

Opposition seeks to prevent the registration of a pending trade-mark application, whereas an invalidity action attacks a registration that has already been granted.

2. When may revocation for non-use be brought?

An action for revocation may be filed once the mark has not been put to genuine use for an uninterrupted period of five years. The INPI will tolerate this period only where the proprietor can supply convincing evidence of use.

3. Must a trade-mark’s reputation be national in scope?

No. A sector-specific or regional reputation is sufficient, provided it is objectively established.