Action for Ownership Claim

An action for ownership claim (action en revendication) is a legal procedure allowing a natural or legal person to claim ownership of an intellectual property right (trademark, patent, design, or model) that has been unduly registered by a third party. This action seeks to obtain the transfer of the disputed right to the legitimate owner by demonstrating an unlawful or fraudulent appropriation.

Legal Basis

The action for ownership claim is governed by different provisions of the French Intellectual Property Code (CPI), depending on the type of contested right:

• Trademarks: The action for ownership of a trademark is provided for in Article L. 712-6 of the CPI, which states if a trademark registration has been applied for either in fraud of the rights of a third party or in violation of a legal or contractual obligation, the person who believes they have a right to the trademark may claim its ownership in court.

• Patents: The action for ownership of a patent is governed by Article L. 611-8 of the CPI, which specifies that if a patent has been improperly filed by someone who is not the inventor or who does not have the necessary rights, the legitimate inventor or their successor in title may claim ownership.

• Designs and Models: For designs and models, Article L. 511-9 of the CPI states that the person who legitimately has the right to registration may claim ownership if it was registered by a third party without rights.

Conditions for an Ownership Claim

An action for ownership claim relies on several key elements:

• Prior Right: The claimant must prove that they had rights to the contested intellectual property before it was registered by the defendant.

• Fraudulent or Abusive Appropriation: It must be demonstrated that the registration was made in violation of the claimant’s rights, either by fraud or in breach of a legal or contractual obligation.

• Legal Time Limit: The action for ownership claim is subject to specific deadlines, generally five years from the publication of the disputed registration (Articles L. 712-6, L. 611-8, and L. 511-9 of the CPI).

Procedure

The action for ownership claim may be initiated:

• Before the competent judicial courts, when the case involves a patent, design, or model.

• Before the INPI (Institut National de la Propriété Industrielle) for certain trademarks, particularly when no parallel infringement action is involved.

The claimant must provide strong evidence of their right to the contested intellectual property, including contracts, proof of use, and elements demonstrating fraud or violation of prior rights.

Effects of an Ownership Claim

If the action is successful, the intellectual property right in question is transferred to the legitimate owner with retroactive effect. This means that the original registration is considered to have been made in the claimant’s name from the outset, allowing them to fully exercise their rights, including protection and defense against infringement.

In some cases, damages and interest may be awarded if the defendant knowingly attempted to deprive the rightful owner of their rights.

Limitation Period

The time limit for initiating an action for ownership claim is five years from the publication of the fraudulent registration (CPI, Articles L. 712-6 for trademarks, L. 611-8 for patents, and L. 511-9 for designs and models). After this period, the legitimate owner can no longer claim the intellectual property right.