The “PACTE” Law provides new important regulations as regards patent (see our article here), but also initiates the transposition of the famous “trademark Package” (detailed in our dossier here) into French law following the Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 (see our article here).
On November 13, 2019, was issued Government order No. 2019-1169 “on trademarks or service marks”, which profoundly modifies French trademark law. It was supplemented, for its application, by Decree No. 2019-1316 of December 9, 2019, published in the Official Journal on December 10, 2019.
The key changes concern the rules applicable to registration and renewal of trademarks, to opposition procedure, procedural aspects of appeals against the French PTO (INPI) decisions. New administrative procedures for revocation or declaration of invalidity (cancelation proceedings) of trademarks are also disclosed and will be addressed in a future update on our website.
Representation of the sign
The graphic representation requirement is removed. The new regulation provides that “the trademark is represented in the national register of marks in an appropriate form using generally available technologies, as long as it can be reproduced on the register in a clear, precise, self-contained, easily accessible, intelligible, durable and objective manner”.
The aim is to allow new types of trademarks such as sound, motion or multimedia marks to be registered.
Collective certification trademarks become guarantee marks, equivalent to the certification marks of the European Union.
The collective marks scheme is aligned with those of the collective marks of the European Union.
The set of rules/regulations of use of both the guarantee marks and the collective marks must be provided on the day the mark is filed.
Trademark renewal proceedings
Any trademark expiring on or after December 10, 2020 may be renewed during the one-year period on or before the expiry date of the registration (the current renewal period is six months).
The opposition procedure may be based on one or more earlier rights, provided that they all belong to the same owner/opponent.
In addition to registered and/or well-known trademarks, oppositions may be based on a corporate name, a trade name, a sign or a domain name which territorial scope is not only local. A designation of origin, a geographical indication, the name of a local authority and or the name of a public entity, may also constitute a ground for opposition.
Formal opposition can now be filed in France provided they are completed within 1 month. The law does not implement any cooling-off mechanism, but the proceedings may be suspended by both parties for a renewable four-months period. Exchanges of observations from both the opponent and the applicant will follow. After considering these observations, and if an agreement has not been reached between the parties, the French PTO will decide on the opposition within a 3-month period. The entire proceeding will last between 6 and 12 months.
Filing is not using
The scope of the rights conferred by the registration of a mark has been clarified.
The mere act of filing a trademark application is not considered trademark use and thus not considered trademark infringement.
It is therefore necessary to have your industrial property rights and titles watched since opposition proceedings are the only way to obtain the cancellation of a non-use trademark.
Appeals against the French PTO decisions regarding the issuance, rejection or maintenance of industrial property rights are cancellation actions. It is now necessary to be represented by a lawyer before the specialized courts of appeals.
Entry into force
The changes to the law shall enter into force on the day following their publication, i.e. on December 11, 2019. The provisions relating to the examination, publication and registration of trademark applications shall apply to applications filed after said entry into force.
Rules regarding invalidity and revocation proceedings will be effective as from April 1, 2020.
The impact of the trademark reform on the registration, use and enforcement of French trademarks is highly important for trademark owners and practitioners. INSCRIPTA already anticipated the most significant developments and is ready to assist and advise you accordingly.
This article was updated in December 2019.
See our corresponding article related to new official fees for French trademarks.