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PACT LAW: TRADEMARK PACKAGE

Vanessa Bouchara

Updated on January 16, 2022

PACTE LAW: TRADEMARK PACKAGE

French trademark law has undergone major changes since the entry into force, on December 11, 2019, of Law No. 2019-486 of May 22, 2019 on the growth and transformation of businesses, known as the “PACTE Law”, supplemented in particular by Order n°2019-1169 of November 13, 2019 and Decree n°2019-1316 of December 9, 2019, as well as by two decisions of the Director General of INPI of December 11, 2019 respectively n°2019-157 and n°2019-158.

The PACTE Law is part of the process of bringing French law into compliance with the European Union’s “Trademark Package” resulting from Directive no. 2015/2436 adopted on December 16, 2015.

The new provisions introduced by the PACTE Act have the effect of adding new categories of trademarks that may be protected, but also new prior rights that may prevent the validity of a trademark.

In addition, the PACTE Law has the effect of profoundly modifying the opposition procedure and assigning new exclusive powers to the INPI in matters of invalidity and revocation of French trademarks.

TRADEMARKS

The new provisions introduced in Articles L711-1 et seq. of the Intellectual Property Code are applicable to trademarks filed as of December 11, 2019.

The new trademark categories

One of the major contributions of the reform is the abandonment of the graphic representation requirement.

Article L711-1 of the Intellectual Property Code now states that:

A trademark or service trademark is a sign used to distinguish the goods or services of a natural or legal person from those of other natural or legal persons.

This sign must be able to be represented in the National Register of Trademarks in such a way as to enable any person to determine precisely and clearly the subject matter of the protection conferred on its owner.”

Thus, the effect of this new wording is to considerably broaden the list of categories of signs that can be protected as trademarks, which now includes :

  • Word trademarks;
  • Figurative and semi-figurative trademarks;
  • Shape trademarks;
  • Holographic trademarks;
  • Pattern trademarks;
  • Color trademarks (single color or combination of colors);
  • Sound trademarks;
  • Movement trademarks;
  • Multimedia trademarks;
  • Position trademarks.

In addition, the new wording of Sections 1 and 2 of Chapter 5, Book VII of the Intellectual Property Code introduces a change in the vocabulary and status of collective trademarks:

  • The “collective certification” trademark becomes the “guarantee” trademark to avoid confusion with the notion of certification under French law. Its regime, established by articles L715-1 and following, is close to the European Union certification trademark, as regards the grounds for invalidity and revocation. The deposit is accompanied by a regulation of use.
  • The collective trademark, governed by articles L715-6 and following of the same code, is similar to the European Union collective trademark. The deposit is accompanied by a regulation of use.

The new absolute and relative grounds for refusal of trademarks

The reform of trademark law has resulted in the introduction of the new articles L711-2 and following of the Intellectual Property Code which list the absolute and relative grounds for refusal and invalidity of trademarks.

New absolute grounds for refusal and invalidity of the trademark

Article L711-2 of the Intellectual Property Code lists all the absolute grounds for refusal and/or invalidity of a trademark. In addition to the cases that were already provided for under the previous regime, this article expressly provides that trademarks cannot be validly registered, or if necessary must be cancelled:

  • Whose deposit was made in bad faith;
  • Whose sign constitutes an appellation of origin, geographical indication or traditional mention for wines and protected traditional specialties;
  • Whose sign constitutes the denomination of a prior plant variety.

New relative grounds for refusal and invalidity of a trademark

Articles L711-3 and L711-4 of the Intellectual Property Code list all the relative grounds for refusal and/or invalidity of a trademark, namely prior rights enforceable against a trademark. This list specifically refers to the following rights, among others:

  • Trademark name, beyond the principle of specialty;
  • .NET domain name
  • Protected geographical indication ;
  • Name, image or reputation of a local authority or public institution.

OPPOSITIONS

One of the other major contributions of the trademark law reform is the creation of a new opposition procedure (Articles L712-4 et seq. of the Intellectual Property Code) applicable to trademark applications filed from December 11, 2019.

The new foundations of the opposition

Opposition proceedings against an application for a French trademark, or French designation of an international registration, may now be based on one or more prior rights provided that all the rights invoked belong to the same owner.

In addition, the new wording of Article L712-4 of the Intellectual Property Code expands the list of prior rights that can be invoked in the context of an opposition, which includes

  • The earlier trademark enjoying a reputation ;
  • A company name, a trade name, a sign or a domain name ;
  • A geographical indication;
  • Damage to the name, image or reputation of a local authority or a public establishment of inter-municipal cooperation;
  • Infringement of the name of a public entity.

The new opposition procedure

The new opposition procedure at the INPI is similar to the one already in force at the EUIPO (European Union Office for Intellectual Property), in that it now includes a purely formal first step, followed by an adversarial phase, as follows:

1- The opponent may now proceed, in the first instance, within the two-month period following the publication of the contested trademark application, to file a formal statement of opposition.

This statement must identify the prior right (s) invoked and the contested trademark application and be accompanied by payment of the opposition fees, namely:

  • 400 euros if the opposition is based on a single prior right;
  • An additional 150 euros for each previous right invoked in addition to the first.
2- In a second step, the opponent will have to file the arguments of the opposition, within one month after the filing of the formal opposition.
3- Then, the procedure continues with a phase called “contradictory” during which the parties are invited to exchange their respective arguments and documents:
  • The applicant has an initial period of two months to respond to the opposition;
  • The parties will then be able to exchange several sets of observations within respective one-month periods, set by INPI notifications;
  • The parties have the possibility of requesting an “oral presentation” in the framework of a hearing which will be fixed by notification of the INPI if necessary;
  • The parties may jointly request up to three suspensions, for periods of 4 months each, which may or may not be cumulative (i.e. up to a maximum of 12 months).
4- The decision of the Director General of the INPI is rendered within 3 months from the closing of the adversarial procedure, the absence of a decision being considered as a rejection of the opposition.

The new requirements for proving genuine use of the earlier trademark invoked in the opposition

Under the new Article L712-5-1 of the Intellectual Property Code, an opposition based on an earlier trademark registered more than 5 years ago shall be rejected if the opponent, upon request of the owner of the challenged trademark application, is unable to prove:

  • Genuine use of the trademark invoked for the five-year period preceding the filing date or priority date of the challenged trademark application,
  • For all goods and services cited in the opposition,
  • Or if not, that there were just reasons for its non-use.

ACTION FOR NULLITY OR REVOCATION

The order established an administrative procedure for the invalidation or revocation of registered trademarks, which applies as of April1, 2020.

Thus, the INPI and the Courts now share the competence in nullity and revocation actions.

Nullity actions

With respect to invalidity actions, Article L716-2 of the Intellectual Property Code provides for the INPI to have exclusive jurisdiction over trademark invalidity actions filed as a principal claim.

In this context, all holders of prior rights as listed in articles L.711-3 and L.716-2 of the Intellectual Property Code, can act directly before the INPI. These individuals may include:

  • The owner of a trademark or its exclusive licensee;
  • The holder of rights in a corporate name or business name ;
  • The owner of rights to a trade name or sign ;
  • The holder of rights to a ;
  • The holder of rights deriving from a geographical indication (PDO/PGI);
  • The holder of rights to the name of a local authority or public institution ;
  • The holder of rights to the name of an activity carried out by a legal person of public law.

The INPI thus hears nullity actions brought on the grounds of absolute nullity (set forth in articles L.711-2, L.715-4 and 7.715-9 of the Intellectual Property Code) as well as on the grounds of relative nullity resulting from the existence of said prior rights.

At the same time, the Courts retain exclusive jurisdiction to hear nullity actions when they are brought in connection with or as a counterclaim to any other claim falling within the jurisdiction of the Courts (and in particular actions for infringement and unfair competition).

However, the Courts remain competent for nullity actions filed as a principal, when these are based on the existence of prior copyrights, design rights and/or personality rights (article L.711-3 6° and 8° of the Intellectual Property Code).

Actions for forfeiture

Before the INPI as well as before the Courts, article L.716-3 of the Intellectual Property Code specifies that any interested person may file an action for revocation.

As of April1, 2020 and pursuant to the aforementioned article L.716-3, the INPI will be invested with exclusive jurisdiction for all actions for revocation based on, among other things

  • Revocation, total or partial, for lack of serious use during an uninterrupted period of 5 years;
  • Revocation of a trademark that has become the usual or generic designation for all or part of the goods and services designated by its registration;
  • Revocation of a trademark misleading to the public;
  • Revocation of a guarantee or collective mark.

Here again, the INPI shares its jurisdiction with the Courts, which retain jurisdiction for revocation actions brought as a counterclaim to a main action that falls within the jurisdiction of the Courts (Article L.716-3 of the Intellectual Property Code cited above).

Specific procedure before the INPI for invalidity and revocation actions filed as a principal claim

When filing the application for nullity or revocation, a number of mandatory elements must be provided by the applicant for nullity or revocation:

  • The identity of the plaintiff and, in the case of an action for invalidity based on prior rights, the information necessary to establish the existence, nature, origin and scope of the prior rights invoked;
  • References of the contested trademark and the goods and services covered by the application for a declaration of invalidity or revocation ;
  • Statement of Claim – it being understood that the plaintiff is not obliged to submit an argument in an action for revocation brought for lack of genuine use;
  • Proof of payment to INPI of the fee of 600 euros;
  • If applicable, the proxy’s power of attorney – this power of attorney may be communicated to INPI within one month of the initial application.

This is followed by an adversarial phase during which the parties will be asked to exchange written observations every two months according to the schedule. As in opposition proceedings, the INPI offers the possibility of requesting oral hearings of the parties.

At the end of this adversarial phase, the Director General of the INPI has a period of 3 months from the end of the adversarial phase to render a decision.

However, this decision may be appealed to the Court of Appeal with jurisdiction over the defendant’s place of residence. This appeal must be filed within one month of the notification of the decision to the parties. As a reminder, the constitution of a lawyer is mandatory before the Court of Appeal and the appeal before the Court of Appeal is suspensive under the provisions of the Code of Civil Procedure.

A classic appeal procedure will then be set up, during which the appellant’s first submissions must be served within 3 months of the notification of the appeal.

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