Opposition

The opposition is an act by which a natural or legal person asks the body in charge of issuing the title concerned (for example, the INPI for a French trademark application and the EUIPO for a European Union trademark application), the rejection of the application for registration on the grounds that it infringes his prior rights.

The entry into force of the “Trademark Package” following Regulation (EU) No. 2017/1001 of June 14, 2017 and the transposition of Directive (EU) No. 2015/2436) by the PACTE Act No. 2019-486 of May 22, 2019 and Ordinance No. 2019-1169 of November 13, 2019, has profoundly modified the opposition procedure of trademark in front of the INPI.

Prior rights enforceable in an opposition

Opposition to a trademark application filed in France, or to the French designation of an international registration, may now be based on one or more prior rights provided that they belong to the same owner.

Indeed, Article L.712-4 of the Intellectual Property Code provides that a subsequent trademark application may be opposed:

• An earlier French or European Union trademark;
• A renowned trademark;
• A well-known trademark, i.e. an unregistered sign that is well-known within the meaning of Article 6 of the Paris Convention;
• A corporate name;
• A trade name, a sign or a domain name, provided that their scope is not only local;
• The name, reputation or image of a local authority;
• The name of a public entity;
• A geographical indication (GI).

Before theEUIPO, it is possible to oppose an application for registration of a European Union trademark:

• An earlier European Union trademark ;
• An earlier national trademark, registered with an Office of a country of the European Union (e.g.: a French national trademark; a German national trademark; a Spanish national trademark etc);
• A reputable national or European Union trademark;
• A well-known trademark;
• An unregistered sign, used in commerce and having a scope that is not only local, provided that these signs are considered opposable by the national law concerned (e.g.: a company name in France);
• An appellation of origin or geographical indication.

Conduct of the procedure

The new opposition procedure before the INPI is similar to the one in force before the EUIPO:

The first step is purely formal: within two months of the publication of the application for registration in France (three months from the publication of the application for registration filed in the European Union), any third party may oppose it before the competent Office.

Thus:

• Identify the prior right(s) invoked and the related proof(s): this includes, for example, the number of the prior trademark invoked, but also the product(s) and service(s ) invoked by the opponent (only part of the product(s) and service( s) can be invoked);
• Identify the disputed application for registration;
• Identify the basis invoked: identical reproduction of the prior right for the same products and services? Or imitation of the prior right creating a risk of confusion in the mind of the public?
• Payment of the official opposition tax.

Second step: the opponent has one month to complete the opposition by filing his arguments, explaining, for example, why he believes there is a risk of confusion.

Third step : adversarial phase during which the applicant of the contested registration application is invited to respond to the opponent with observations in reply.

There may be several exchanges of observations between the parties (up to 3 per party before theINPI), and the applicant may also request evidence of the use of the earlier trademark invoked when it has been registered for more than five years at the time of the application.

In such a case, if the opponent fails to demonstrate genuine use of the trademark he is opposing, his opposition will be considered inadmissible and will therefore be rejected.

Fourth step, optional: presentation of oral observations in the context of a hearing set by theINPI, at the request of one of the parties.

If no party requests a hearing, the hearing phase is closed once the parties have exhausted their right to make submissions, or have missed a deadline to respond.

Before theEUIPO, there is no possibility to request oral observations.

Last step: once the adversarial phase is over, the Office will issue its decision.

In France, the Director General of theINPI is obliged to render his decision at the latest within 3 months from the closing of the adversarial phase.

In the European Union, theEUIPO is not locked into a time limit to render its decision (6 to 9 months in practice, sometimes more).

Focus on the assessment of the risk of confusion

The decision of the competent Office will be based on whether or not there is a likelihood of confusion (or infringement of the reputed trademark, if applicable) between the earlier right invoked and the contested application.

It will be up to the Agency to demonstrate the risk that the public may mistakenly believe that the contested product(s) and/or service(s ) originate from the same company, or economically related companies, as the opponent. It can also be characterized in case of risk of association.

It follows from the case law of the CJEU (CJEU, Sept. 29, 1998, Canon, C-39/97) that the analysis of the likelihood of confusion results from taking into account the following elements:

• Consumer attention span;
• Degree of similarity of the designated product(s) and/or service(s ) ;
• Degree of similarity of the conflicting signs and any other factors (including the reputation and/or the degree of distinctiveness of the earlier trademark)

The likelihood of confusion is thus established when the product(s) and/or service(s ) in question are identical or, at the very least, similar, and the signs have visual, phonetic and/or conceptual similarities.

This comparison is also made in the context of invalidity and trademark infringement actions.

In order to anticipate the legal and practical risk of third parties reacting against your trademark registration, it is recommended to carry out a search for prior rights that may hinder it(trademarks, company names, domain names, etc.).

A trademark is a major asset in business life and must therefore be protected and defended.

Faced with the increase in fraudulent filings and the development of counterfeiting on the Internet, it is recommended to be accompanied by a lawyer specialized in intellectual property (assessment of the chances of success in the context of a procedure, analysis of the opportunity of an amicable resolution, etc.).

Update on time limits for filing objections

Before the INPI, the time limit to oppose a French trademark application is 2 months from the publication of the application. Before the EUIPO, the time limit for opposing a European Union trademark application is 3 months from the date of the application.

Point of jurisprudence

The signs DOCTOLIB and DOCTOTEL have been considered similar by the INPI for the following reasons (INPI, October 25, 2021, Opposition n°21-1481)

• common attack term DOCTO ;
• close physiognomies ;
• almost identical sounds;
• the suffix “TEL” in the contested application is weakly distinctive (abbreviation of the word “telephone”) and therefore does not constitute a sufficient difference to rule out the likelihood of confusion.

The opponent relied on its earlier corporate name DOCTOLIB and on the reputation of its French trademark DOCTOLIB.

As the opposition based on the corporate name was deemed perfectly justified by the INPI, the Institute did not rule on the infringement of reputation and rejected the DOCTOTEL trademark application (INPI, October 25, 2021, decision n°21-1481).

The Bouchara firm assists you in particular in :

• Conducting prior art searches in order to identify the most important risks and/or to try to minimize the risks of filing;
• The formalities of trademark registration (drafting the wording of the classes of product(s) and/or service(s), analysis of the distinctive character of the sign etc.);
• Monitoring of your distinctive signs in order to identify any new identical or similar filing that could infringe them;
• The conduct of negotiations with the opposing party to try to reach an agreement if necessary (limitation of the wording of the product(s) and/or service(s), signing of a letter of commitment, coexistence agreement etc.);
• The protection and defense of your intellectual property assets before the Offices and the Courts (opposition, nullity action, lapse action for lack of exploitation or for loss of distinctive character, seizure for infringement, action for unfair competition etc…);
• Preparation of proof-of-use files for lapse actions.