Order n°2019-1169 of 13 November 2019 on goods and services marks, its implementing decree n°2019-1316 of 9 December 2019 and the Minister of the Economy and Finance and the Minister of Public Accounts decision of the same date on procedural fees of the French national institute of industrial property (INPI, the acronym for the original French "Institut National de la propriété industrielle") significantly amend French trademark law by transposing into national law the provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015, known as the "Trademark Package", the purpose of which is to harmonize and modernize trademark law within the European Union.
This modernization of French law awaited by trademark practitioners and owners will have important practical consequences in terms of trademark protection and defence strategy.
The new provisions are almost immediately applicable – since with the exception of the procedural changes that will come into force on 1st April 2020 – they entered into force on 11 December 2019 (i.e. the day after the publication of the implementing decree of 9 November 2019).
Below is an analysis of the key measures of this reform.
The door has been opened to the registration of new types of trademarks
Firstly, the definition of the trademark has been simplified. As from the effective date of the new rules, it is defined simply as "a sign used to distinguish the goods or services of a legal person". To be valid, the trademark will no longer have to "be capable of being represented graphically".
In practice, this change should make it possible to grant trademark rights to more "technical" signs, such as sounds or graphic animations. These new categories of trademarks must, however, be represented in the national trademark register in a "clear, precise, distinct, easily accessible, intelligible, durable and objective manner".
Although these new categories already exist at the European Union level, it will be interesting to see how the INPI will approach this significant issue in response to technological developments in marketing practices and to make French trademark law attractive.
Renewal of the opposition procedure
The opposition procedure before the INPI has been profoundly reshaped. As in the case of the opposition procedure before the European Union Intellectual Property Office (EUIPO), it will no longer be necessary to file the statement of grounds and supporting documents simultaneously with the statement of opposition. Under the new procedure, the opponent will be able to file its statement of grounds within one month of filing the statement of opposition. In practice, this additional time limit should be appreciated by holders of earlier rights who will therefore have a further month in which to obtain the voluntary withdrawal of the contested trade mark application or, where appropriate, to negotiate a coexistence agreement.
In addition, the reform extends the list of prior rights that may be the basis of an opposition to include, in addition to prior trademarks, company names, trade names, signs, domain names whose scope is not only local or geographical indications or the name of a public entity. It will be possible to invoke cumulatively several prior rights of a different nature.
The purpose of this extension of prior rights that can be invoked against a trademark application is to strengthen the protection of companies that have developed intangible assets that can be imitated by third parties without having registered a trademark.
Reorganization of trademark invalidity and revocation litigation
As of April 1, 2020, jurisdiction to hear actions for the invalidity or revocation of a trademark will be transferred exclusively to the INPI in the context of a new administrative procedure. Tribunaux de Grande Instance (First Instance Courts) will retain exclusive jurisdiction primarily for claims for invalidity or revocation filed as a counterclaim or in connection with any other claim within the jurisdiction of the Court (including unfair competition actions).
This diversion of a portion of the litigation on invalidity and revocation is explicitly intended to clear the trademark register. Consequently, companies, which have with increasing frequency found themselves stymied on a project due to the existence of a prior trademark which has not been used for over 5 years or which does not meet the criteria for the validity of a trademark will be able to react more easily and obtain a decision from the INPI (normally) more quickly than in the case of legal action due to the congestion of the courts.
Filing of a trademark: Introduction of an individual fee from the first class and new rates
The flat-rate official fee for filling a trademark for 3 classes has disappeared and has been replaced by a fee for each class.
In addition, this reform has been accompanied by an increase in the official fees for filing, renewal and opposition procedures.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.