Following the French law n°91-7 of 4 January 1991, the opposition procedure is an administrative procedure which allows to request the total or partial rejection of a troublesome trademark application in an efficient and cost-effective manner, without having to go to court. The French Ordinance n°2019-1169 of 13 November 2019 regarding trademarks has profoundly changed the system of registration of protected trademarks in France by improving and expanding this French opposition procedure. The new French opposition procedure applies to trademark applications filed on or after December 11, 2019, which is the date of entry into force of the ordinance.
Before the INPI, the trademark right subject to opposition is either:
A French trademark application; or
An international trademark designating France.
If the contested right is a European Union trademark then the opposition will have to be filed before the EUIPO
Deadline for filing an opposition with the INPI: how does it work?
Who can file an opposition before the INPI? On what basis?
Owners of earlier French trademarks, European Union trademarks (Community trademarks) or international trademarks designating France.
Owners of unregistered but well-known trademarks within the meaning of Article 6bis of the Paris Convention.
However, following Ordinance n°2019-1169 of 13 November 2019, the opposition procedure is not only reserved to holders of trademarks protected in France. Indeed, the scope of prior rights on which an opposition can be filed has been widened.
The opponent may rely on:
Trademarks with reputation
The name or company name
Trade name or commercial sign
The name of a public entity
In addition, it is now possible to file the same opposition on the basis of several earlier rights, thus considerably reducing costs. Before the reform, the opponent had to file as many oppositions as there were prior rights invoked.
Furthermore, it is recommended that the opponent calls upon a representative such as an Industrial Property Attorney or a lawyer who will represent him. The use of a representative is also compulsory when the trademark used as a basis for the opposition belongs to several owners or when the opponent does not reside in a Member State of the European Union.
Finally, the reform not only reinforced the requirements for proof of use of the earlier trademark but also increased the number of possible exchanges between the parties with the aim of strengthening the adversarial nature of the procedure.
Dreyfus Law Firm remains at your entire disposal for any questions concerning the opposition procedure following the Ordinance n°2019-1169 of 13 November 2019. We are ready to support you throughout the procedure in order to ensure the defence of your rights.