An upcoming transposition of the EU Trademarks Reform under French law.
The French Government released on February 15th, the draft Bill transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16th, 2015 to harmonize the laws of the Member States relating to trademarks. This draft will be subject to public consultation until March 20th, 2019.
The proposed Bill closely resembles, in its formulation and in its structure, the text of the directive to avoid legal uncertainties.
The main amendments with regards to the current system brought by this draft Bill are as follows:
- Grounds for rejection or invalidity have expressly been added: infringement of designations of origin, geographical indications, plant varieties, bad faith of the applicant, trademark filed by the agent or the representative of the holder. These grounds could already be examined either by the INPI or by courts, on the basis of other texts or in some cases, on the basis of the general principles of law.
- Abolishment of the graphic representation requirement. This deletion should in particular allow filing sound marks, multimedia marks, motion marks, etc., like what is possible since 2017 with the EUIPO (European Union Intellectual Property Office).
- The procedure of opposition against a French trademark is modified and resembles that existing with the EUIPO.
In particular, the prior rights likely to be invoked in an opposition are extended to company names and to the names of institutions, authorities or public law bodies. It will be possible to base the opposition on several rights pertaining to the same holder. The grounds are also extended with the possibility of basing an opposition on a reputed trademark when the contested trademark is likely to obtain an undue benefit from the reputation of the trademark or cause prejudice thereto, as well as to trademarks filed by an agent or a representative, without the authorization of the legitimate holder.
On the procedural side, the text proposes bringing numerous changes: a formal opposition becomes possible with the obligation of filing the statement and the supporting documents of the opposition within one month as of expiry of the opposition deadline. The phase corresponding to the establishment of a decision project that is known in the current procedure is deleted, but the possibility of an oral hearing is maintained. The French TMO is granted the authority to examine the evidence of use of the prior trademark if these documents are requested by the applicant. The Institute will keep as ground of the opposition the products or services for which no use has been substantiated. The possibility of having the procedure suspended on joint request of the parties is maintained but extended to three periods of four months (12 months maximum instead of six as is currently the case). Finally, the Director of the TMO will no longer have to adjudicate within a maximum of 6 months as of expiry of the opposition deadline, but within three months as of the completion of the pre-trial phase, said pre-trial phase may intervene at different periods of the procedure, depending on the complexity of the debates between the parties.
- The renewal date of a French trademark is modified. In the current system, a trademark can be renewed until the last day of the month of expiry and within an additional period of grace of six months. The ordinance states that the trademark should be renewed at its date of expiry and within an additional period of six months. Moreover, in the current system, the renewal cannot be requested for prior to six months before expiry. The ordinance states that the renewal can be filed for within a deadline of one year before the date of expiry of the registration.
- An administrative procedure for invalidity and revocation for non use is introduced with the INPI. This introduction is made compulsory by the European Directive. This procedure will enter into force in the first quarter of 2020. The invalidity actions primarily formed and exclusively founded on absolute invalidity grounds or some relative invalidity grounds, as well as the revocation for non use actions primarily formed, fall within the exclusive competence of the INPI – unless some judicial litigations are already underway between the parties, in which case the judge will remain competent. The set up administrative procedure closely resembles the new opposition procedure. Nonetheless, the disclosure of the means should be submitted at the time of filing the action and the unsuccessful party may be sentenced to pay a lump sum to the other party. Appeals against the invalidation or revocation decisions are reversals on appeal. Appeals are brought before the Court of Appeal by writ of summon, according to a new procedure much more complex than that applicable to appeals formed against the other decisions of the Director-General of the INPI.
- The requirement of having interest in bringing proceedings is abolished for invalidity actions based on absolute grounds and for revocation for non use actions.
- The invalidity actions become imprescriptible except those based on a well-known trademark within the meaning of Article 6bis of Paris Convention which lapse for 5 years starting from the date of registration of the contested trademark.
- The prescription of the counterfeit action remains for five years, but it is specified « starting from the day the holder of a right has learnt or should have learnt the last deed enabling him to exert it ».
- The non-use of the prior trademark becomes a means of defense in the invalidity actions.
- The rules governing the protection of certification marks and collective marks are modified.
This draft text has been transmitted for consultation to the different associations specialized in industrial property. Afterwards, it should be adopted this spring or at the beginning of the summer, recalling that the directive should have been transposed before last January 14th.