Trademark

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.

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

v

Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

 v

Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.