Available since April 1st, 2020, the procedure for revocation of French trademarks (or French parts of international trademarks) allows the cancellation of trademarks which have, for some reasons, lost their ability to function as trademarks after being registered.
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.
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.
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.
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