Invalidity action

Article L.714-3 of the Intellectual Property Code states that:

“the registration of a trademark shall be declared null and void by a court decision or by a decision of the Director General of the National Institute of Industrial Property, pursuant to Article L.411-4, if the trademark does not meet the conditions laid down in Articles L.711-2, L.711-3, L.715-4 and L.715-9 [of the Intellectual Property Code ].”

In French law, the trademark may be cancelled, at the request of any third party, on absolute grounds (e.g.: trademark lacking distinctive character, trademark contrary to public policy, trademark likely to mislead the public, filing in bad faith, etc.) or for relative reasons (prior rights of third parties opposed to a later trademark such as a registered for identical or similar classes of good(s) and/or service(s), reputed trademark, existence of a previous corporate name, etc.).

The grounds and modalities of the application for a declaration of invalidity are similar to those of the European Union trademark.

The invalidity of the trademark takes effect on the date of its filing.

It therefore has a retroactive effect and will no longer benefit from protection from the outset, and possibly (depending on the application and the decision) for all the good(s) and/or service(s) for which it was filed and registered.

Since 1st January of April, 2020, in France,  competence of the INPI has expanded since, according to well-defined rules of competence, and depending on the situation, both the INPI and the Judicial Courts may now be competent to rule on invalidity actions in matters of trademarks (previously reserved exclusively to the Courts).

As far as the INPI is concerned, this jurisdiction is exclusive for trademark invalidity actions filed as a principal claim (article L.716-5-I-1° of the Intellectual Property Code).

Appeals against this type of decision fall within the jurisdiction of the Court of Appeal.

The Judicial Courts remain competent in the following cases:

• The claim for invalidity is made as a counterclaim, i.e. as a defence in proceedings initiated by a third party – however, this counterclaim, which is new in nature, must be related to the initial case;

• The claim is related to other claims under the exclusive jurisdiction of the Court of Justice (e.g. copyright infringement);

• The request for invalidity is made on the basis of specific grounds such as infringement of public policy (Article 711-2-7° of the Intellectual Property Code);

• The request for invalidation follows provisional or conservatory evidentiary measures (e.g. seizure of an infringement, summary proceedings).

An invalidity action is not, as a matter of principle, subject to prescription. However, there are two exceptions:

• The owner of an earlier trademark who has tolerated the use of a second trademark in good faith for 5 consecutive years can no longer request its invalidation, this is the foreclosure by tolerance;

• An application for a declaration of invalidity based on a well-known trademark is time-barred within a period of 5 years from the registration of the contested application, except in cases of bad faith on the part of the owner.

In addition, the administrative demand for lapse of trademark (for lack of exploitation/use)serious use of the trademark by its owner, or for This could be seen as a risk of drift and therefore of legal insecurity, as any person could disrupt the life of the trademark without having to justify his interest.

Unlike cancellation, which has a retroactive effect, revocation of a trademark results in the loss of the trademark right as of the date of the application for revocation.

The INPI has established a first assessment of these actions for 2021.

Thus, in France, 750 new invalidation applications have been filed with the INPI since April 1st 2020, including 465 in 2021.

The cases concerning invalidity applications are much higher than those concerning forfeiture in 2021 (58/42).

The grounds for invalidity claims are mainly relative (prior rights) and in the absolute grounds, bad faith is regularly raised.

Indeed, fraudulent deposits can be common and even constitute a technique for some counterfeiters.

In areport, the INPI indicates that nullities are pronounced in the majority of decisions.

The conditions and deadlines for filing a trademark invalidity application may vary from one country to another, as each country has its own legislation on the subject.

It is recommended to call upon a counsel (CPI) or lawyer specialized in the matter to accompany you in the negotiations with third parties, if necessary, and the drafting of statements of claim and response to be filed in the context of invalidity actions.

Point on the risk of confusion

When the signs are not identical but only similar, it is then necessary to demonstrate the existence of a risk of confusion (article L.713-2-2° of the Intellectual Property Code).

The likelihood of confusion exists when the public may believe that the good(s) and/or service(s) in question come from the same company or from economically related companies.

As regards the signs, the assessment of the likelihood of confusion is based on the one hand on the distinctive character or not of the marks in question, and on the other hand on the analysis of three poles of similarity, namely :

• Visual similarities;
• Phonetic similarities;
• Conceptual similarities.

Point of jurisprudence

In the context of an application for a declaration of invalidity based on the lack of distinctiveness of a sign, it is up to the plaintiff to demonstrate the lack of distinctiveness of the contested sign, it being specified that the distinctiveness of a sign is assessed on the day of its filing and not on the day of the filing of the declaration of invalidity (INPI, December 16, 2021, n°NL 21-0104).

In the context of an application for a declaration of invalidity based on an earlier trademark, the Bordeaux Court of Appeal recalled in a decision dated January 4, 2022 that :

“Since the sign complained of does not constitute an identical reproduction of the first mark opposed to it, it is necessary to determine whether there is a likelihood of confusion between the two signs in the mind of the average consumer, a likelihood that must be assessed globally in the light of all the relevant factors, on the basis of the overall impression conveyed by the visual, auditory or conceptual similarity of the marks at issue, taking into account their respective distinctive and dominant elements.

The risk of confusion covers the risk of association when the consumer can be led to believe that he is in the presence of a declination of trademarks.

It is up to the court to assess this risk in the mind of the consumer, which stems from the identity of the goods in question on the one hand and the similarities between the signs in question on the other. ” (Bordeaux Court of Appeal, January 4, 2022, n°20-04.944)

Update on the opposition procedure

In France, a trademark application may be opposed by third parties within two months of its publication in the Bulletin Officiel de la Propriété Industrielle (BOPI).

After this period, a natural person or a company owning a prior right, who would not have detected the filing of a similar trademark, in particular within the framework of its surveillance, may still bring an action for invalidity and/or an action for infringement against the registered trademark.

The Bouchara firm assists you in particular in :

• Prior art search prior to any trademark application;
• Writing the wording of the good(s) and/or service(s) classes;
• The filing of your trademarks before the Intellectual Property Office;
• The protection and defense of your trademark rights against third parties before the Intellectual Property Offices and the Courts;
• Opposition , nullity, seizure and lapse proceedings.