Brand Package

The Trademark Package, which came into force on December 11, 2019 with the “pact law” n°2019-486 and was completed by two decisions of the Director General of the INPI of December 11, 2019, is part of the ongoing process of bringing French law into compliance with the European Union’s “Trademark Package”, adopted in 2015 through the transposition of Directive (EU) n°2015/2436 of December 16, 2015.

The provisions of the Intellectual Property Code were consequently amended by Ordinance No. 2019-1169 of November 13, 2019 on trademarks and service marks.

This is a major reform of French trademark law, which has the following effects

• To add new types of protectable trademarks;
• To add new types of signs to the list of prior rights that may hinder the validity of a trademark;
• To attribute new exclusive competences to the INPI in matters of nullity and revocation of French trademarks.

Signs eligible for trademark protection

Thus, with respect to the categories of signs that may be protected as It is now possible to apply for the registration of word, figurative and semi-figurative, shape, holographic, pattern, color, sound, motion, multimedia and positional marks(subject to the distinctive character of the registered sign with respect to the product(s) and/or service( s) concerned.

In addition, the mark formerly known as the “collective certification mark” is now renamed the “guarantee mark”, and has a similar regime to that of the European Union certification mark.

The collective mark has a regime close to that of the European Union collective mark, always with the objective of harmonization.

New absolute and relative grounds for refusal of trademarks

The reform of the Trademark Package, and more precisely the article L.711-2 of the Intellectual Property Code, now provides that, alongside the traditional absolute grounds for refusal/a trademark may be refused registration or canceled if its the sign constitutes an appellation of origin, geographical indication or traditional expression, or if the sign constitutes the denomination of a prior plant variety.

With regard to relative grounds, it is now possible tofor a rights holder to enforce a trademark, beyond the principle of speciality, a notorious brand, a domain name, a PGI or the name, image or reputation of a local authority or public institution prior to a subsequent trademark.

Thus, theopposition procedure and the nullity action that will be brought by the right holders before the INPI, following the attribution of new competences to the INPI, may be based on one or several prior rights among those listed in articles L.712-4 of the Intellectual Property Code.

New competences attributed to INPI

While nullity and revocation actions were until now exclusively brought before the Courts, the Trademark Package establishes an exclusive competence for the INPI in matters of trademark nullity and revocation actions brought as a principal.

The Courts retain exclusive jurisdiction:

• To hear actions for nullity and forfeiture brought in connection with or as a counterclaim to all other claims within the jurisdiction of the Courts, and in particular all actions for infringement and unfair competition, if any;
• To hear nullity actions filed primarily on prior copyrights, designs and/or personality rights.

It is recommended to call upon a counsel (CPI) or lawyer specialized in the matter to accompany you in the steps with the Offices and the actions which can be brought by holders of identical or similar prior rights.

Point of jurisprudence

A company requested the cancellation of the French trademark HYGROTOP before the INPI, based on its previous corporate name HYGROTOP ASSECHEMENT and on the bad faith filing.

The INPI, which now has jurisdiction in this matter, noted that the applicant had a business relationship with the plaintiff and was therefore aware of the prior use of the sign HYGROTOP ASSECHEMENT, and had thus filed the mark in bad faith.

The trademark was therefore rejected by the Office. HoweverThe INPI refused to grant the requests based on the previous corporate name (INPI, February 23, 2022, n°NL21-0167).

The Bouchara firm assists you in particular in :

• Protection and defense of your trademarks in France and abroad;
• Prior art search prior to any trademark registration;
• The formalities for filing your trademarks (drafting the wording of the product(s) and/or service(s ), analysis of the distinctive character of the sign etc.);
• Follow-up of the registration procedure of your trademarks, including the replies to the notifications of irregularities issued by the Offices, if any, and the transmission of the Certificate of Registration issued by the Office;
• Opposition proceedings, actions for invalidity and actions for revocation for failure to use or for loss of distinctive character of the registered sign;
• Legal proceedings before the Courts, based on claims of infringement and/or unfair competition.