Trademark

Introduction

In the field of intellectual property, trademark protection is a major issue for businesses. Beyond registering a trademark, there are strategies to anticipate conflicts and avoid costly litigation. Pre-litigation in trademark law is a crucial phase in which preventive actions help resolve disputes before they escalate into court proceedings. This process is essential to secure a company’s rights and preserve its reputation while avoiding unnecessary legal expenses.

This article explores the role of pre-litigation in trademark law, how it helps avoid conflicts, and the practical steps companies can take to use it effectively.

Protecting your brand : a strategic imperative

Protecting a trademark is essential to guarantee a company the exclusive use of its distinctive sign. This protection, obtained through registration with the INPI in France and the EUIPO in the European Union, helps prevent identity theft and preserves the uniqueness of the company’s image.

1.1 Standing out effectively in a competitive market

A registered trademark is a symbol of consumer recognition and loyalty. It ensures the company that its sign is protected against unauthorized use, allowing it to distinguish its products and services from those of competitors.

1.2 A brand as a valuable asset for the company

A trademark is not just a sign; it is also a valuable asset. A protected trademark enables the company to strengthen its market position, enhance its image, and even generate revenue through exploitation, assignment, or licensing.

Pre-litigation in trademark law: a strategic response before trial

Pre-litigation refers to the steps taken before any court proceedings in order to resolve a dispute amicably or preventively. The goal is to settle a potential trademark conflict without resorting to lengthy and costly legal procedures.

2.1 Identifying risks before they become disputes

One of the main tools in pre-litigation is monitoring. By quickly identifying any trademark infringement, the company can respond effectively to protect its rights before the situation worsens. Monitoring can cover both registered trademarks and unauthorized uses of distinctive signs on online platforms such as social networks, where third parties might use similar or identical marks for commercial purposes, as well as on e-commerce sites.

2.2 Reacting early: cease-and-desist letters and negotiation as key tools

When a conflict is detected, the first pre-litigation action is often to send a formal warning letter. This letter requests the other party to cease using the disputed trademark. If this step fails, a coexistence agreement or similar negotiation may be considered.

Pre-litigation: a lever to prevent legal escalation

3.1 Controlling costs and avoiding lengthy procedures

Judicial procedures can be extremely expensive in terms of legal fees and time. Pre-litigation helps identify issues as they arise and resolve them before they escalate into lawsuits. This avoids significant costs associated with court proceedings.

3.2 Protecting brand image discreetly

Legal disputes can be perceived negatively by consumers. Even a publicly won lawsuit can tarnish a brand’s image. Pre-litigation helps maintain a positive reputation by resolving conflicts discreetly and swiftly.

3.3 Optimizing resources: time, energy, finances

Legal conflicts demand considerable human and financial resources. Turning to pre-litigation allows the company to stay focused on its core business and avoid diverting energy toward a prolonged dispute.

4. Trademark disputes : hidden but formidable costs

Costly disputes extend beyond legal fees and can severely affect a company’s strategy. Key examples include :

• Legal and expert fees: Lawyers’ fees, court expenses, and expert reports can amount to substantial sums
  • Disruption to business operations: The company spends significant time defending itself rather than growing its business
  • Missed opportunities: Engaging in a conflict can block partnerships, damage brand image, and lead to lost economic prospects

Anticipating such issues helps a company avoid the burden of a lengthy legal process, which may end up being far more expensive than preventive measures.

Building an effective strategy to avoid costly disputes

5.1 Implementing rigorous trademark monitoring
Implementing a trademark monitoring system is essential. This includes regularly checking new trademark filings and online activity. It helps detect potential infringements before they become major issues.

5.2 Smart negotiation with similar brands

In certain situations, it may be wise to negotiate coexistence agreements with companies using similar trademarks. This allows for clear boundaries regarding brand usage and helps prevent conflicts.

5.3 Acting without litigation: the amicable path as first response

If a conflict arises, sending a warning letter is often a prudent first step. If this proves ineffective, mediation or negotiation can help resolve the issue without resorting to court proceedings. These amicable approaches are usually quicker and less expensive.

5.4 Getting the right legal advice early On

It is advisable to consult a trademark law specialist to receive precise and tailored legal advice. A detailed legal assessment will help determine the most appropriate pre-litigation strategy.

Pre-litigation tools: anticipate to better protect

The following tools can be used to avoid costly trademark disputes:

• Legal and commercial watch: Monitoring trademark databases and online platforms
  • Trademark opposition: Challenging the registration of similar trademarks upon filing
  • Mediation and amicable resolution: Using mediation services to reach a settlement without litigation

Conclusion : preventing means protecting your brand for the long term

Pre-litigation in trademark law is an essential tool for any company aiming to protect its brand identity without resorting to costly legal disputes. Through proactive measures, companies can minimize legal risks, maintain their brand reputation, and optimize internal resources.

Dreyfus & Associates offers recognized expertise in pre-litigation and trademark dispute management. We support our clients in designing preventive strategies to anticipate risks and effectively protect their intellectual assets.

Nathalie Dreyfus and the Dreyfus team.

FAQ

1. What is pre-litigation in trademark law ?

Pre-litigation refers to all amicable actions taken before initiating legal proceedings to resolve a conflict related to the use of a trademark. It includes monitoring, risk analysis, sending cease-and-desist letters, and negotiating agreements. This phase often allows for resolving disputes without going to court, thereby reducing costs and preserving business relationships.

2. Why monitor competing trademarks ?

Monitoring competing trademarks is essential for any business that wants to protect its identity effectively. A watch system allows companies to quickly identify new trademark applications that may cause confusion with their own, enabling them to act promptly to avoid disputes. It also helps detect unauthorized use of the brand online, on social media, or in points of sale, whether it involves imitation or abusive exploitation. Regular monitoring is also a tool for early detection of counterfeiting, which can seriously damage a company’s reputation and revenue if not addressed quickly.

3. How can trademark conflicts be avoided ?

It is crucial to check, before filing, that the chosen trademark does not infringe on existing rights. The application should clearly define the targeted products, services, and territories. Regular monitoring helps identify similar uses or filings. In case of risk, swift action such as an opposition or cease-and-desist letter is necessary. Finally, being assisted from the outset by a specialized attorney helps secure the entire protection strategy.

In the ever-changing world of intellectual property, trademarks are strategic assets that distinguish products and services in the marketplace. However, their value lies not only in their registration, but also in the vigilance shown by their owners to prevent unauthorized use. One of the major legal pitfalls in this regard is foreclosure by tolerance, a mechanism that can deprive the owner of their rights if they fail to act within the prescribed time limits.

Forfeiture by tolerance cannot be equated with prescription. Forfeiture is based on the voluntary inaction of the trademark owner, whereas prescription is a rule of common law linked to time. Forfeiture prevents any action for invalidity or infringement, even if the facts are recent.

I – Understanding forfeiture by tolerance in trademark law

Definition and legal framework

Laches refers to a situation in which the owner of an earlier trademark knowingly tolerates, for a continuous period of five years, the use of a later registered trademark without taking any action. In European law, Article 61 of the EU Trademark Regulation (EUTMR) codifies this mechanism:

“1. The owner of a trademark of theEuropean Union who has, for five consecutive years, tolerated the use of a later European Union trademark in the European Union while being aware of that use may no longer apply for a declaration of invalidity of the later trademark on the basis of the earlier trademark for the goods or services for which the later trademark has been used, unless the registration of the later European Union trademark was made in bad faith.

2. The proprietor of an earlier national trademark referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) who has, for five consecutive years, tolerated the use of a later EU trademark in the Member State where that earlier trademark or other earlier sign is protected, while being aware of that use, may no longer apply for a declaration of invalidity of the later trade mark on the basis of the earlier trade mark or the other earlier sign in respect of the goods or services for which the later trade mark has been used, unless the registration of the later EU trade mark was made in bad faith.
3. In the cases referred to in paragraphs 1 or 2, the proprietor of the later European Union trademark may not oppose the use of the earlier right, even if that right can no longer be invoked against the later European Union trademark.

Where the conditions are met, the person who has tolerated the use may no longer contest the validity of the later trademark or prohibit its use.

Essential conditions for forfeiture

For forfeiture by tolerance to occur, four cumulative conditions must be met:

1. Knowledge: the proprietor of the earlier trademark must have been aware of the use of the later trademark.
2. Continuous use: the later trademark must have been used continuously for five years.
3. Good faith: the later trademark must have been registered and used in good faith.
4. Absence of legal action: no legal action must have been taken during this period.

Clarification of the concept of “knowledge”

The condition of actual knowledge by the owner of the earlier trademark is a central criterion for forfeiture by acquiescence, but also one of the most debated.

According to the settled case law of the General Court of the European Union (Case T-150/17) and the Court of Justice of the European Union (Case C-381/12 P), knowledge must be actual, not merely presumed. In other words, implicit knowledge or knowledge inferred from the behavior of the proprietor is not sufficient. Proof of actual knowledge of the use of the later trademark is required.

In particular, the Court of Justice recalled in judgment C-381/12 P that:

“The proprietor of an earlier trademark cannot be regarded as having had knowledge of the use of a later trademark unless he actually had knowledge of that use, and not merely implicit knowledge or knowledge inferred from the behavior of the proprietor of the trademark.”

Similarly, the European Union Court of Justice in case T-150/17 clarified:

“Consequently, the proprietor of a trade mark challenged by a declaration of invalidity cannot merely prove potential knowledge of the use of his trade mark by the proprietor of an earlier trade mark, nor can he adduce consistent evidence capable of giving rise to a presumption of such knowledge.”

It is therefore not sufficient that the later trademark is visible on the market or that there are infringement proceedings in other jurisdictions. For example, the mere presence of the disputed trademark in the results of an automated monitoring system does not constitute sufficient evidence in the absence of other concrete evidence.

However, evidence of actual knowledge may result from:

• correspondence between the parties referring to the use of the trademark;
• joint presence at trade fairs where the trademarks are used;
• or the signing of a prior coexistence agreement (case 3971 C).

In case R 1299/2007-2, the EUIPO clarified an important point concerning the condition of knowledge in the context of estoppel by acquiescence. It ruled that the proprietor of the earlier trademark does not need to be aware of the registration of the later trademark, i.e., it is not necessary for them to have formal knowledge that the later trademark has been filed or registered with the competent office. However, it is essential that the proprietor of the earlier trademark has actual knowledge of the use of the later trademark during the relevant period, i.e., that they know that the trademark is being used on the market, despite its registration.

Thus, the period of tolerance begins to run only from the moment when the proprietor of the earlier trademark has actual and objective knowledge of the use of the later trademark, and not simply of its existence as a filing or administrative registration, for five consecutive years. The Board of Appeal ruled, in particular:

“What is important in this context is the objective circumstance that the sign (the use of which was knowingly tolerated by the applicant for annulment) must have existed for at least five years as a Community trademark (CTM).”

II – Risks associated with failure to defend trademark rights

Legal consequences

Failure to take timely action against the unauthorized use of an identical or similar trademark may result in a permanent loss of rights. Once the right has been forfeited through tolerance, the prior owner can no longer bring an action for invalidity or infringement against the later trademark for the products or services concerned. This legal barrier requires absolute responsiveness in order to maintain the enforceability of one’s rights.

Economic consequences

The economic effects of a failure to defend one’s rights are equally damaging:

• Weakening of the trademark: The coexistence of similar trademarks weakens the uniqueness and symbolic value of the earlier trademark. The strength of a trademark lies largely in its ability to distinguish itself clearly from other signs used by competitors. When a similar trademark is tolerated or left unopposed, this differentiation gradually becomes diluted. The earlier trademark then loses some of its exclusivity, which can alter its symbolic value among consumers and business partners. This deterioration affects not only the qualitative perception of the trademark, but also its commercial strength and its ability to embody the identity and values of the company.
• Consumer confusion: Similar trademarks can confuse the public, undermine trust, and divert sales. Consumers faced with a fragmented range of similar signs may find it difficult to clearly identify the origin of products or services. This uncertainty undermines consumer confidence, which can result in hesitation to purchase or even rejection of the market. Furthermore, confusion may encourage the misuse of the reputation and renown of the earlier trademark by the owners of later trademarks, to the detriment of consumer loyalty to the original trademark.
• Loss of market share: Competitors taking advantage of the similarity may capture a share of the customer base by unfairly benefiting from the reputation of the original trademark. This capture of customers is often based on an illegitimate appropriation of the reputation and marketing efforts of the original owner. The impact is reflected in a decrease in sales and, ultimately, an erosion of the original brand’s competitive position. In a competitive market environment, this loss can permanently undermine the economic and strategic viability of the company.

III – Strategies for active trademark protection

Proactive monitoring and detection

Rigorous market monitoring is essential. The implementation of monitoring systems enables the rapid detection of infringing registrations or uses. Regular audits and analysis of national and international databases are also crucial tools for anticipating litigation.

Legal action and timely responses

As soon as unauthorized use is identified, it is advisable to act without delay. This may take the form of:

• formal notices (see limitations below),
• oppositions to the registration of conflicting trademarks,
• or legal action if necessary.

These measures not only serve to avoid foreclosure, but also strengthen the legitimacy and exclusivity of the trademark.

Interruption of the foreclosure period

The starting point and suspension of the grace period are also the subject of extensive case law.

The CJEU ruling C-482/09 established that simply sending a formal notice is not sufficient to interrupt the foreclosure period, unless this letter leads to a concrete result (e.g., voluntary withdrawal, a coexistence agreement, or the initiation of legal proceedings).

Only administrative or judicial action—such as an action for invalidity before the INPI or the European Union Intellectual Property Office (EUIPO) or an action before the national courts, such as an action for infringement—can effectively interrupt the five-year period.

A recent ruling (Case C-466/20) confirmed that sending an unsuccessful warning, even if it proves clear opposition, is not sufficient to prevent foreclosure if no formal action follows. The Court specifies that:

“Any interpretation of Article 9 of Directive 2008/95 and Articles 54, 110 and 111 of Regulation No 207/2009 as meaning that the sending of a warning letter is sufficient, in itself, to interrupt the limitation period would allow the proprietor of the earlier trademark orother earlier right to circumvent the limitation period by tolerance by repeatedly sending, at intervals of nearly five years, a letter of formal notice. Such a situation would undermine the objectives of the limitation period by tolerance, as recalled in paragraphs 46 to 48 of this judgment, and would deprive that system of its effectiveness.”

This decision highlights the importance of active vigilance and legal responsiveness in the face of unauthorized use of an earlier trademark.

Similarly, the signing of a coexistence agreement interrupts the period of foreclosure by tolerance, thereby suspending the period during which the owner of the earlier trademark could lose its rights due to its tolerance. However, if that agreement is subsequently breached or ceases to have effect, a new period of five years begins to run, provided that the proprietor of the earlier trademark again becomes effectively aware of the use of the later trademark. This rule was clarified by decision R 267/2014-2.

In that case, the Board of Appeal held, inter alia:

“Consequently, since the application for a declaration of invalidity was filed on July 11, 2012, the contested decision correctly concluded that less than five consecutive years had elapsed between the end of the verbal agreement, i.e., from the moment when the applicant for invalidity had the opportunity not to tolerate the use of the contested Community trademark, and the application for a declaration of invalidity. On the other hand, even if it were considered that the verbal agreement between the parties had not been breached and had ended when the proprietor of the Community trademark filed opposition against the Community trademark application ‘BONASYSTEMS’ on February 16, 2010, that verbal agreement should, in the absence of evidence to the contrary, be considered still valid. Consequently, the proprietor of the earlier trade mark is still not in a position to refuse to tolerate the use of the latter Community trade mark in the United Kingdom. It follows that the application for a declaration of acquiescence must be dismissed.

Thus, the period of forfeiture can only be resumed if two conditions are met simultaneously: the effective termination of the coexistence agreement and the prior proprietor’s awareness of the continued use of the later trademark.

Conclusion

Actively defending your trademark is not just a legal obligation: it is a strategic imperative. Knowing and anticipating the effects of foreclosure by tolerance is essential to preserving the value, exclusivity, and integrity of a trademark portfolio. A policy of systematic vigilance, combined with targeted and rapid responses, is the best guarantee for ensuring the longevity of an asset as sensitive as a trademark.

The law firm Dreyfus & Associés assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus & Associés is partnered with a global network of lawyers specializing in intellectual property.

Nathalie Dreyfus with the assistance of the entire Dreyfus team.

This article was published on the Village Justice website.

FAQ

The rise of artificial intelligence (AI) has revolutionized numerous sectors, including brand naming. Many companies now question whether a name generated by AI can benefit from legal protection as a trademark. This article reviews the relevant French legal framework and analyzes whether such a name can be registered, provided it complies with the provisions of the French Intellectual Property Code (Code de la propriété intellectuelle, CPI).

The Legal Framework for Trademarks in France

Definition and Acquisition of Trademark Rights

According to Article L.711-1 of the French Intellectual Property Code, a trademark is defined as a sign capable of distinguishing the goods or services of a natural or legal person from those of others. Ownership of a trademark is acquired through registration, pursuant to Article L.712-1 of the same code. Registration grants the holder exclusive rights over the trademark for the goods or services listed.

Conditions for Trademark Validity

For a trademark to be valid and registrable, it must meet the following conditions:

• Distinctiveness: The sign must be capable of distinguishing the goods or services of one company from those of another.
• Lawfulness: The sign must not be contrary to public order or accepted principles of morality.
• Non-deceptiveness: The sign must not mislead the public, particularly regarding the nature, quality, or origin of the products or services.
• Availability: The sign must not infringe any prior rights, such as already registered trademarks or protected business names.

These criteria are outlined in detail by the French National Institute of Industrial Property (INPI).

Applicability to AI-Generated Names

Compliance with Legal Requirements

A brand name generated by artificial intelligence may be registered in France as long as it complies with the above-mentioned conditions. The mere fact that the name is AI-generated does not preclude registration, provided it is distinctive, lawful, non-deceptive, and available. Notably, Article L.711-1 CPI does not impose any requirement regarding the origin of the sign, which means names generated by automated systems are not excluded from protection.

Specific Considerations Related to AI

Different considerations apply under copyright law. Unlike trademark law, which is focused on distinctiveness and availability, copyright protection requires human creative input and that the work reflects the author’s personality. Indeed, Article L.112-1 of the French Intellectual Property Code states that “works of the mind, whatever their genre, form of expression, merit, or purpose,” are protected, provided they are original.

As such, while a name generated by AI is unlikely to qualify for copyright protection without human input, it can nevertheless be registered as a trademark, assuming it fulfills the requirements set out in Articles L.711-1 et seq. of the CPI.

Recommendations for Businesses

Registering a trademark that results from a process involving AI requires a legally sound and strategic approach. Although the law does not exclude names generated by AI, their validity depends on a detailed legal analysis under the French Intellectual Property Code.

It is therefore essential to consult with an intellectual property expert – such as a specialized attorney or industrial property counsel – to secure the entire process. This professional can:

• Assess the compliance of the name with the validity criteria set out in Articles L.711-1 and following, particularly its distinctiveness, lawfulness, and lack of conflict with prior rights;
• Proceed with a thorough clearance search, which is critical to avoid future legal disputes;
• Review the terms and conditions of the AI tools used, particularly regarding ownership or assignment of the generated content, which may include restrictive clauses;
• Structure and document the name creation and selection process, to demonstrate, if necessary, a substantial and voluntary human intervention in the final choice.

This approach significantly strengthens the legal security of the trademark filing and helps anticipate risks related to the algorithmic origin of the sign.

Conclusion

Trademarks generated by artificial intelligence can be protected under French law, provided they meet the requirements of the Intellectual Property Code. By following the appropriate steps and involving qualified legal counsel, companies can effectively safeguard brand names created with the help of AI tools.

At Dreyfus Law Firm, we stand ready to provide comprehensive legal strategies tailored to each client’s needs. Our services include advising on trademark protection, and litigation support across multiple jurisdictions.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

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FAQ

Effective trademark management in France requires a thorough mastery of the administrative procedures needed to challenge a trademark’s validity or obtain its revocation. The French National Institute of Industrial Property (INPI) provides simplified mechanisms for invalidation (nullity) and revocation (déchéance), enabling stakeholders to maintain fair practices in the field of trademarks.

In 2023, trademark-related cases account for 91% of all procedures before the INPI. Invalidation actions have risen to 22% (compared to 19% in 2022), while revocation procedures have decreased from 17% to 9%.

Introduction to Invalidation and Revocation Procedures before the INPI

The procedures for invalidation and revocation, introduced by the EU Trademark Package in 2020, allow you to challenge improper registrations or revoke a trademark. They offer a faster and more cost-effective alternative compared to court proceedings.

• Invalidation (Nullity): The trademark was invalid from the moment it was registered. It is therefore removed from the register with retroactive effect.
• Revocation (Déchéance): The trademark has lost its validity due to events occurring after its registration. Its effects end only for the future.

Key statistics:

• In 2023, 60% of successful invalidation actions were based on absolute grounds.
• Favorable revocation decisions for non-use represent 75% of cases initiated since 2021.

These tools protect market integrity and ensure fair competitive practices.

The Invalidation Procedure

Invalidation aims to eliminate trademarks that should never have been registered.

Absolute Grounds for Invalidation

A trademark may be invalidated if it:

• Lacks distinctiveness: e.g., generic or descriptive terms.
• Is contrary to public policy or accepted principles of morality.
• Misleads the public: e.g., about the geographical origin or quality of the products.

Relative Grounds for Invalidation

A trademark may be invalidated for infringing prior rights:

• Identical or similar trademark already registered.
• Pre-existing copyright, trade names, or domain names.

Dive Deeper: When a trademark is challenged on relative grounds, it is crucial to present a clear comparative analysis of the distinctive elements, including phonetics, appearance, and meaning. Citing relevant case law bolsters your arguments.

Case Law Example: In 2022, a French trademark was invalidated for causing confusion with an EU trademark registered 5 years earlier (Source: INPI).

Extended Practical Example: A competitor registered a trademark using the dominant color of a pre-existing company, combined with similar wording. An expert analysis of consumer perception was crucial in convincing the INPI to invalidate the trademark on relative grounds.

The Revocation Procedure

Revocation addresses abuses or omissions that occur after registration.

Non-Use of a Trademark

If a trademark is not used within 5 years of its registration, it can be revoked. For instance, a trademark registered in 2017 with no proven use by 2023 could be subject to revocation.

Focus: Evidence of use may include invoices, advertising materials, or packaging samples. The absence of such documents weakens the owner’s position.

Becoming a Generic Term

Abusive use can cause a trademark to lose its distinctiveness. Examples include Aspirin or Kleenex, which have become generic terms in some countries.

Misleading Use

Use that misleads consumers about the nature or origin of products may lead to revocation.

Recent Example: In 2021, a trademark was revoked for misleading use after being applied to products radically different from those stated in the registration.

Administrative Process before the INPI

Filing the Application

• Identify the targeted trademark.
• State the grounds (invalidation or revocation).
• Include the supporting evidence (non-use reports, market research, etc.).

Practical Tip: For complex applications, engaging an attorney can be pivotal to avoid rejection for incomplete filings.

Adversarial Phase

Each party presents its arguments and evidence through structured exchanges. Counter-evidence may include customer testimonials or financial data.

Final Decision and Appeals

• Effects of Decisions:
  • Invalidation: Retroactive effect.
  • Revocation: Future effect only.
• Appeals may be filed with the Paris Court of Appeal.

Practical Cases and Case Law Examples

1. Example of an Invalidation Action: A French trademark was invalidated for failing to meet distinctiveness requirements (Source: INPI, case 2022-03).
2. Example of a Revocation Action: A trademark not used within 5 years of registration was revoked in 2023 for non-use (Source: INPI case law).

Advanced Strategies to Maximize Your Chances of Success

1. Comprehensive Evidence Analysis: Gather persuasive documents such as expert reports, market studies, or consumer surveys to substantiate your claims.
2. Leverage Case Law: Reference similar cases to strengthen your position.
3. Prepare a Strategic File: Ensure each piece of evidence is presented coherently and in an organized manner.
4. Professional Support: Consult with intellectual property experts to maximize your odds of success.

Analysis of Recent Trends in Invalidation Actions

Increase in International Actions

With the rise of cross-border trade, trademark disputes involving international parties have risen significantly. Many companies seek to extend trademark protection beyond national borders, leading to conflicts with similar or identical trademarks registered in other jurisdictions. This trend is pushing owners to step up monitoring of their intellectual property assets.

Key Statistics:

• In 2023, 35% of invalidation actions involved international parties (source: INPI).
• A 15% increase in oppositions to European trademarks was observed during the same period.

The Rise of Digital Tools

The INPI and other organizations have implemented digital platforms to streamline the filing and tracking of procedures. These tools offer greater transparency and faster management of disputes. However, they also demand quick adaptation by companies to ensure accuracy and completeness in their filings.

Focus on Distinctiveness

Invalidation actions based on a lack of distinctiveness have been particularly numerous in 2023. Companies are now using more rigorous methods to demonstrate that contested trademarks are not sufficiently distinct from generic products or services.

Resources and Practical Tools

Useful Links for Professionals:

1. INPI Platform: Link to the filing portal
   • Enables online submission of invalidation and revocation requests.
   • Provides educational resources on procedures.
2. INPI Trademark Database: Trademark search
   • Tool for searching registered trademarks and identifying potential conflicts.
3. WIPO (World Intellectual Property Organization):
   • Platform for monitoring trademarks internationally (WIPO link).
4. Practical Guides:
   • Download the guide on trademark disputes (INPI).

Analysis and Monitoring Tools:

• Semrush / Ahrefs / Ubersuggest: Keyword analysis associated with trademarks to anticipate disputes.
• TrademarkVision: AI-based tool for detecting visual similarities between trademarks.
• Google Alerts: Track public mentions of your trademark or potential conflicts.

Our Expertise

At Dreyfus & Associés, we understand the importance of protecting your intellectual property assets while maintaining your competitiveness in the marketplace. Our services include:

1. Audit and Strategy:
   • Evaluation of trademarks and identification of potential risks.
   • In-depth analysis of grounds for invalidation or revocation.
2. Representation before the INPI and the Courts:
   • Meticulous preparation of case files with convincing evidence.
   • Robust defense in adversarial proceedings.
3. Strategic Monitoring:
   • Monitoring competing trademarks.
   • Early detection of possible conflicts.
4. International Management:
   • Coordinating litigation across multiple jurisdictions.
   • Aligning strategies on a global scale.

Contact us for a personalized consultation and learn how we can support you in all your initiatives.

FAQ

1. What is the difference between invalidation and revocation?

• Invalidation addresses issues at the time of registration (e.g., lack of distinctiveness).
• Revocation addresses abuses or omissions that occur after registration (e.g., non-use, misleading use).

2. What are the deadlines for filing an action?

• There is no time limit for filing an invalidation action.
• A revocation action may be initiated as soon as non-use is established (after 5 years).

3. How much does a procedure before the INPI cost?

• Filing fees are generally moderate, with a base cost of €600 for an invalidation or revocation procedure. Attorney fees are additional.

4. Can I appeal an INPI decision?
   Yes, a decision can be appealed before the Paris Court of Appeal within one month of the notification.
5. Why should I consult an intellectual property expert?
   An expert ensures strategic analysis and thorough case management, significantly increasing your chances of success.