Simplification of cancellation and invalidity procedures in France
Cancellation and invalidity actions are now filed online, before the IP French Office whilst it was previously required to act before the French Courts. Key advantages:
The above actions cost about 1,500 to 2,500€ today whilst it cost between 8,000 to 10,000€ when it was instituted before the Courts which was daunting for companies.
This new process allows companies to proactively react against competitors or third parties’ trademark registrations whilst actions before the French Courts were lengthy.
Applicants are not required to demonstrate an interest in bringing these proceedings before the French IP Office.
Introduction of the invalidity for bad faith
Bad faith has been introduced as a new ground for invalidity actions which allows companies to react when a business partner register a mark on his own for example.
If a company failed to file an opposition within the prescribed period of 2 months, it can still administratively react afterward thanks to the invalidity action.
On December 11th, 2019 French trademark law underwent a number of significant chances with the entry into force of the ‘PACTE Act’ (Action Plan for Business Growth and Transformation). Promulgated on May 22nd, 2019, the Act forms part of an economic reform plan of the current government and carries with it important changes in the domain of Intellectual Property rights aimed at simplifying the enforcement and protection of IP rights, and resulting in a greater degree of harmonization with EU law:
Oppositions: The possibility to file an opposition on the basis of one or more IP rights, i.e. no longer limited to trademarks, but also domain names, trade names, etc...
NB: Before filing an opposition before the French IP Office, companies must note that they will be required to prove that they are genuinely using the trademark(s) upon which the opposition is based, in relation to each and every products and/or services.
Trademark protection term: Whilst trademarks were previously protected until the end of the month of the date of their expiration, they are now protected from date-to-date.
However, the most notable change resulting from the implementation of this Act is the modification of the status of cancellation and invalidity actions.
Focus on cancellation and invalidity actions: an extended scope of action
The ‘PACTE Act’ introduced the ability for trademark holders to launch cancellation and invalidity procedures directly before the French IP Office. Indeed, these two procedures previously filed before the French Courts were lengthy and expensive, and often used as ‘last options’ for trademark protection strategies. However, since April 1st, 2020, the two actions have become administrative, thereby removing the time and financial burden previously felt by rights holders.
Cancellation action will be introduced against a trademark which has not been genuinely used during the past five years or which has become generic in relation to the products and/or services for which it is used.
Invalidity action will be introduced against a trademark which should not have proceeded to registration in the first place and based on relative grounds (e.g. identical or similar to a prior trademark, trade name, domain name, etc or filed in bad faith) but also absolute grounds (e.g. descriptiveness, deceptiveness, against public order, etc).
Another key aspect of this measure is that the applicant for cancellation or invalidation of a registered mark does not have to prove any interest in bringing these actions before the French IP Office – except for invalidity action based on relative grounds. This allows anyone to contest the validity of a registered trademark.
Two procedures as strategic tools during negotiations:
To maintain pressure (e.g. when a party does not respond to a proposition of amicable settlement)
To protect your rights against untrustworthy business partners (e.g. when the licensee registers a trademark in its own name without the authorisation of the licensor)
To react at a later stage when the opposition deadline was overlooked
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