L’article Countries of the International trademark system est apparu en premier sur Inscripta.

The program is developed and hosted by Bpifrance, which describes itself as the French agency for innovation, delivering massive programs to innovative entrepreneurs, and which goal is to favour the growth of the French economy by helping entrepreneurs thrive.

This program is designed exclusively for French start-ups, SMEs with no more than 2,000 employees, wishing to develop and enhance their patents, designs, trademarks and any other intangible assets.

Inscripta will carry out a comprehensive IP analysis, enabling you to contextualize and assess effective strategies for making the best use of your IP assets.

These services are financed up to 80% by Bpifrance.

Please contact us should you need more information.

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Image by ar130405 under Pixabay license (resized; original size 1280 x 720).

L’article Inscripta expert for assessment of IP strategy est apparu en premier sur Inscripta.

Brexit has a huge impact on intellectual property (IP) rights within the European Union (EU) and a lot of complex questions may arise. Below is a few pieces of information regarding the main aspects of how Brexit affects trademarks and designs.

Registered EU trademarks (EUTMs) & Registered International registrations (IRs) covering the EU

Registered EUTMs and registered IRs covering the EU on 31 December 2020 are now treated as if they have been applied for and registered under UK law.
They have been cloned onto the UK register as comparable UK trade mark rights and have now become National UK trade mark rights.
Registered marks retain the same filing date, and the same priority and/or seniority dates as the EUTMs or IRs covering the EU they originate from.
They have been given registration numbers corresponding to the EUTM registration numbers prefixed with ‘UK 009’, or corresponding to the IRs registration numbers prefixed with ‘UK 008’.
The conversion was automatic and free.
Renewal dates for comparable UK registrations remain the same as for the EUTMs, or IRs covering the EU, they originate from, which means that renewals now need or will need to be filed separately before the UK IPO.

Registered and published Community designs (RCDs) & Registered and published International designations covering the EU

The same rules as for registered trademarks apply, if and only if the designs were registered and published on 31 December 2020.
Prefixes for comparable UK registered designs are ‘UK 9’ if they originate from RCDs, or ‘UK 8’ if they originate from EU International designations IRs covering the EU.

Pending applications for EU trademarks (EUTMAs) & Pending applications for International registrations (IRs) covering the EU
Pending applications for Community designs & Pending applications for International designations covering the EU

Trademark/design applications that were still pending on 31 December 2020 were not converted or cloned onto the UK register as comparable UK applications.
Applicants of pending trademark/design rights may apply to register a corresponding (strictly identical) UK trademark/design within what is referred to as a ‘nine-month priority period from exit day’.
If the nine-month priority deadline is met, comparable UK trademarks/designs will retain EUTMAs or Community designs filing/priority dates.

Other aspects of Brexit

If you have more specific questions, regarding use/non-use of trademarks, reputation of trademarks, records of transfers or licences, licence agreements, pending oppositions against EUTMAs, pending cancellation actions against EUTMs or RCDs, pending judicial actions against EUTMs or RCDs, conversions, restorations, etc., do not hesitate to ask.

 Patents

Existing European patents covering the UK are not affected by Brexit.
The European Patent Convention (EPC) is an International convention dealing with patent protection in more than 30 countries in Europe. The European Patent Office (EPO) is not an EU agency.
The UK leaving the EU does not affect the current European patent system.

What you need to know

If INSCRIPTA manages your trademarks and/or designs portfolios, you have already received (or will receive shortly) information regarding your IP rights and custom-made suggestions.

If you are not one of our clients, we can take over representation for all of your EUTMs, EUTMAs and RCDs with no charge. Based on your IP rights, we will provide you with detailed and practical guidance as how to deal with the effects of Brexit.

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L’article Brexit is effective since 1st of January of 2021 est apparu en premier sur Inscripta.

Mostly similar to the opposition procedure, the application for revocation may be filed by any person (there is no requirement for an interest in bringing proceedings), on the basis of one or several of the following grounds:

• Within the past five-year period, the mark has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use
• The mark has become the common name in the trade for a product or service in respect of which it is registered
• The mark has become liable to mislead the public particularly as to the nature, quality or geographical origin of those goods or services
• The guarantee or collective mark does not meet anymore certain specific conditions.

Proceedings

The procedure is processed online by the cancellation division of INPI, the French PTO. Foreign parties should be represented by a French trademark attorney, which is advisable anyway, given the technicality and the stakes of the procedure.

The office carries out a preliminary assessment of the admissibility requirements and notifies the owner of the challenged trademark or its representative.

It is therefore essential to keep the names and addresses of the owners of French trademarks updated before the French PTO at all times. Otherwise, it is taking the risk of not being notified and not being able to defend oneself.

The procedure lasts between 5 and 9 months and takes place in two stages.

First, the adversarial stage during which the parties present facts, evidence and arguments. Any observation or document transmitted to INPI by one of the parties is communicated to the other, who is given an opportunity to respond. The parties may request a hearing to submit oral observations.

Then, INPI issues its decision on the merits and on costs within three months.

The decision has the same effect as a judgment. It is published and registered with the national trademark register. The trademark is removed from the French register with retroactive effect, from the date when the revocation application was submitted or after the five-year non-use period, the earliest date of revocation being the day following the fifth anniversary of the registration date.

The revocation decision can be appealed to one of the ten courts of appeal having exclusive jurisdiction for trademark matters (See our article here, footnote 2), with devolutive effect.

Our recommendation

Now more than ever, trademark owners should take appropriate measures to compile sufficient evidence of use of their trademarks, and to monitor the use of their trademarks, including by third parties, in order to prevent or reduce the risk to see their trademarks being diluted into generic names.

INSCRIPTA helps you develop and implement a global strategy to uphold and enforce your trademark rights.

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L’article Trademark revocation procedure before the French PTO est apparu en premier sur Inscripta.

The request for a declaration of invalidity may be based on absolute grounds (the mark is not valid and should not have been registered by INPI, the French PTO) or on relative grounds (the mark infringes earlier rights of third parties).

Absolute grounds

The application for a declaration of invalidity may be filed by any person (there is no requirement for an interest in bringing proceedings), on the basis of one or several of the following grounds:

• The sign does not constitute a mark
• The mark is devoid of any distinctive character
• The sign is made up exclusively of elements that can be used to designate a characteristic of the product or service or elements that have become common to designate a characteristic of the product or service
• The sign consists exclusively of the shape or another characteristic of the product imposed by its nature, its function or giving it its substantial value
• The mark is excluded from registration according to article 6ter of the Paris Convention, or in application of the laws providing for the protection of appellations of origin and geographical indications, traditional terms for wines and traditional specialties guaranteed
• The sign is contrary to public order or its use is legally prohibited
• The sign is likely to deceive the public
• The sign consists of the name of a plant variety
• The mark was registered in bad faith
• The guarantee or collective mark does not meet certain specific conditions.

Relative grounds

The application for a declaration of invalidity may be filed by the owner (or licensee) of one or several of the following prior rights with effect in France:

• A French or European Union trademark, an International trademark having effect in France or in the European Union, a well-known mark
• A trademark with a reputation in France or, in the case of a European Union trademark, a reputation in the European Union
• A company name if there is a likelihood of confusion for the relevant public
• A trade name, a sign or a domain name, the scope of which being not only local, if there is a likelihood of confusion for the relevant public
• A designation of origin and geographical indication
• The name of a regional authority or a public establishment for cooperation between local authorities
• The name of a public entity if there is a risk of confusion for the relevant public.

Proceedings

The procedure is processed online by the cancellation division of INPI. Foreign parties should be represented by a French trademark attorney, which is advisable anyway, given the technicality and the stakes of the procedure.

The office carries out a preliminary assessment of the admissibility requirements and notifies the owner of the challenged trademark or its representative.

It is therefore essential to keep the names and addresses of the owners of French trademarks updated before the French PTO at all times. Otherwise, it is taking the risk of not being notified and not being able to defend oneself.

The procedure lasts between 6 and 12 months and takes place in two stages.

First, the adversarial stage during which the parties present facts, evidence and arguments. Any observation or document transmitted to INPI by one of the parties is communicated to the other, who is given an opportunity to respond. The parties may request a hearing to submit oral observations.

Then, INPI issues its decision on the merits and on costs within three months.

The decision has the same effect as a judgment. It is published and registered with the national trademark register. The trademark is removed from the French register with retroactive effect, as if it had never been registered.

The invalidity decision can be appealed before one of the ten courts of appeal having exclusive jurisdiction for trademark matters (See our article here, footnote 2), with devolutive effect.

INSCRIPTA has extensive experience in handling trademark proceedings before INPI and we would be happy to represent you or your clients.

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L’article Trademark invalidation procedure before the French PTO est apparu en premier sur Inscripta.

Such a procedure, formally comparable to the opposition procedure, now falls under the exclusive jurisdiction of the INPI if this is:

• An application for revocation of a trademark, in particular if, within a continuous period of five years, the mark has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;
• An application for invalidity when the mark should not have been registered on absolute rounds, for example for lack of any distinctive character, and / or if the mark should not have been registered on relative grounds, i.e. because of the existence of an earlier trademark right, company name or domain name.

Judicial courts retain exclusive jurisdiction over:

• Any application for cancellation of a trademark based on at least a copyright, a French registered design or personality rights;
• Any application for cancellation of a trademark which would be related to any other action falling within the jurisdiction of the courts, such as for example an action for infringement, unfair competition or contractual liability.

This new administrative procedure for revocation or declaration of invalidity provides for an accelerated and more cost-effective route as compared to prior legal actions brought before the courts, and should contribute to reduce the overload of the trademark register.

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L’article New administrative procedure for cancellation of French trademarks (revocation or declaration of invalidity) est apparu en premier sur Inscripta.

To our knowledge, this specific procedure did not exist in any country but in France.

The procedure was mostly used to protect new logos of already registered trademarks. You could indeed associate a new trademark application for the new logo to the early renewal of the trademark corresponding to the older logo. You could as well file the new trademark application for a new list of goods and services, and associate the new application to the early renewal of an older trademark covering an older list of goods and services.

It was a very effective way of adapting one’s trademark registration to a new graphic identity and/or to new activities, whilst securing the seniority attached to the oldest trademark.

And it was cost-efficient as well since, in the long term, associated trademarks were to be renewed simultaneously by paying mutualised official fees.

This specific procedure was abrogated by the latest reform of French trademark law (here).

There are two main consequences.

1.

For French trademarks previously associated with one another, there is no financial incentive anymore.

It is still possible to renew simultaneously two previously associated trademarks, but it equals to two renewals and official fees must be paid for both renewals as if separately.

Decisions to renew only one trademark or two associated trademarks would then depend on several factors, such as the seniority attached to the older trademark, the way the mark is currently used, the relevance of the lists of goods and services, the logo currently used, etc.

2.

Because of the abrogation of this specific system, it would be unsafe not to register both the verbal version of one’s trademark and its figurative version.

This way, in case one’s logo is modified, the verbal sign would still be protected on its own, and there would not be any interest in renewing a logo that is not used any longer.

As always, INSCRIPTA remains at your side to implement the proper strategy.

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L’article Abrogation of French procedure of early trademark renewal est apparu en premier sur Inscripta.

L’article New official fees for trademarks in France est apparu en premier sur Inscripta.

L’article New French regulations relating to trademarks est apparu en premier sur Inscripta.

This Article corresponds to Article L.615-8 for patent infringement actions (see our article here) and to Article L.521-3 for infringement actions related to industrial designs.

If the five-year limitation period remains the same (since Act No. 2014-315 of March 11, 2014 increasing the limitation period from three to five years), it no longer runs from the date when the infringement occurred, but from the date the right holder has known the last fact of infringement.

The new provision clearly benefits the rights holders, for it is sometimes hard to detect and be aware of counterfeiting, especially when the infringement is of small intensity or not easy to detect. The new wording will prevent the limitation period from running when the infringement was not known.

Besides, the new wording refers as a starting point to “the last fact” of infringement. Although this will have to be interpreted by the courts, it could be understood that an action initiated within the time limit may concern all acts of infringement, regardless of the date on which they were committed. Such an action could then allow compensation over the entire duration of the infringement.

The new text entered into force on May 24, 2019 but does not allow actions to be brought for cases already time-barred on this date.

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See our corresponding article related to new French regulations relating to trademarks.

L’article Modification of the limitation period for infringement proceedings est apparu en premier sur Inscripta.