First decision of INPI regarding partial cancellation of a trademark, regarded as detrimental to the reputation of a well-known trademark

[12/02/2021] As a reminder, pursuant to the application of the so-called PACTE Act on Trademarks, actions for invalidation and revocation may be brought directly before the Trademark Office (INPI) since the 1st April 2020.

On 22 December 2020, the Office declared for the first time the partial invalidation of a trademark RICHARD MILLE, on the following grounds:

- Damage to the reputation of the earlier international trademark RICHARD MILLE no 732812 in relation with “fine watchmaking”, and:

- Likelihood of confusion between the contested trademark and the earlier international trademark RICHARD MILLE no 1338089 for some goods and services.

NB, in such proceedings, it is possible to request the refund of the costs incurred. Yet, in this case, insofar as the declaration of invalidity of the trademark is partial and not total, the request for the reimbursement of the costs incurred by the applicant did not succeed.

Our staff would be happy to assist you in your proceedings.