Brand cancellation

The cancellation of the trademark can be obtained through an action by which a person or the Public Ministry asks a court or an office to pronounce the total or partial cancellation of an industrial property title.

Nullity may be claimed as a principal or as a counterclaim.

Article L.714-3 of the Intellectual Property Code (IPC) states that “the registration of a trademark that does not comply with the provisions of Articles L.711-1 to L.711-4 shall be declared null and void by a court decision”.

Article L.411-1 of the Intellectual Property Code, as amended by the Ordinance of February 12, 2020, provides that theINPI is also competent to hear actions for invalidity.

The invalidity of a trademark can be requested on the basis of :

• Absolute grounds: one of the conditions of validity of the trademark is missing (sign devoid of distinctiveness, contrary to public policy or morality, misleading, filed in bad faith etc…) or ;
• Relative grounds: the trademark infringes on the prior rights of a third party valid in France.

An action for nullity may be based on more than one ground and on more than one prior right.

If the action is based on absolute grounds, it may be brought by any natural or legal person.

On the other hand, if the action is based on relative grounds, the plaintiff must be the owner of the prior rights he or she is claiming.

Before taking action, the claimant must ensure that, in the event of an assignment, the new owner has been registered with the National Trademark Registry.

Otherwise, the Court or theINPI would risk rejecting the prior trademarks invoked if they are not registered in the name of the applicant and, in absolute terms, rejecting the invalidity action.

The invalidity of a trademark may be requested directly by the interested party acting personally or, if he so wishes, by an authorized representative, in particular an Industrial Property Attorney or a Lawyer specialized in intellectual property law, sitting in a Member State of the European Union.

However, the use of an agent is mandatory when the trademark is registered in the name of several persons or when the plaintiff is neither established nor domiciled in France.

Depending on the basis of the action, the demonstration can be complex, in particular when it is necessary to show the bad faith of the applicant or the infringement of the prior rights invoked.

Therefore, the use of a specialized agent in such an action is strongly recommended.

Update on the procedure

The new provisions of the IPC (which came into force on December 11, 2019 with the PACTE law n° 2019-486 of May 22, 2019) have introduced a new administrative procedure before the INPI.

Since April 1, 2020, the INPI is competent to hear actions for invalidity and revocation of trademarks, previously reserved exclusively for the courts. The duration of the procedure is then reduced to 6-10 months before the INPI.

However, the Court retains exclusive jurisdiction when the claim for invalidity is related to another legal action, counterclaim, when investigative measures are in progress or if the action is based on copyright or design rights.

Update on brand licensing

The exclusive licensee has the right to bring an action for cancellation if the owner of the trademark, having been given notice to act, does not exercise this right, and unless otherwise stipulated in the trademark license agreement.

Update on action timeframes – Contributions of the PACTE law

The request for nullity can be made at any time.

However, an action based on a well-known trademark is time-barred within a period of 5 years from the registration of the contested application, unless the applicant acts in bad faith.

Similarly, if the owner of a trademark has tolerated the good faith use of a third party’s trademark for 5 consecutive years, he will no longer be entitled to sue, unless he can demonstrate the bad faith of the applicant.

Articles L.716-2-6, -7 and -8 of the Intellectual Property Code.

The Bouchara firm assists you in particular in :

• Drafting and filing of the invalidity action (administrative or judicial), against a French or European Union trademark;
• Preparing and filing a brief in response to a nullity action;
• Negotiations with third parties, if any.