Available since April 1st, 2020, the procedure for cancellation of French trademarks (or French parts of international trademarks) allows the invalidation of registered trademarks.
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).
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.
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.
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.