Cancellation action

An Cancellation action is a legal procedure aimed at challenging the validity of an intellectual property right, such as a trademark, patent, or design, by demonstrating that the legal conditions for its validity are not met. If the action is successful, the right in question is retroactively annulled as if it had never existed.

Legal Basis

The legal basis for an action for cancellation varies depending on the type of intellectual property right concerned:

• Trademarks: The provisions regarding the cancellation of trademarks are primarily set out in the French Intellectual Property Code (Code de la propriété intellectuelle, CPI), notably in Articles L. 716-2 and following. These articles specify the grounds for absolute and relative nullity, as well as the applicable procedures.

• Patents: For patents, the action for cancellation is governed by Articles L. 613-25 and following of the CPI. These provisions detail the conditions under which a patent can be annulled, for example, due to a lack of novelty or inventive step.

• Designs and Models: Articles L. 513-1 and following of the CPI address the cancellation of designs and models, specifying grounds such as the absence of novelty or distinctive character.

Grounds for cancellation

The grounds that may justify an action for nullity vary depending on the intellectual property right concerned, but generally include:

• Lack of novelty: The protected right was not new at the time of its filing.

• Lack of distinctive character: Particularly for trademarks, if the sign is descriptive or generic.

• Contravention of public order or morality: The protected right is contrary to fundamental principles of society.

• Infringement of prior rights: The protected right infringes an already existing intellectual property right.

Procedure

Jurisdiction over actions for cancellation depends on the intellectual property right involved:

• Trademarks: Since the 2020 reform, the Institut National de la Propriété Industrielle (INPI) has jurisdiction to rule on cancellation requests filed as principal claims, unless they are linked to a counterfeiting action, in which case the judicial courts are competent.

• Patents: Cancellation actions of patents are brought before the competent judicial courts.

• Designs and Models: Judicial courts are also competent for nullity actions concerning designs and models.

Statute of Limitations

The time limits for initiating a cancellation action vary:

• Trademarks: The cancellation action is not subject to any limitation period, except for well-known trademarks, where the time limit is five years.

• Patents: No limitation period applies to the cancellation action of a patent.

• Designs and Models: Nullity actions may be brought throughout the entire protection period of the design or model.

Effects of Nullity

Once nullity is pronounced, the intellectual property right is deemed never to have existed. This results in the retroactive disappearance of all actions based on this right, including previously initiated infringement actions.