2019/11 > French implementation of the EU Directive relating to trademarks
Order No 2019-1169 of November 13rd, 2019 relating to trademarks incorporating into French law the provisions of Directive (EU) 2015/2436 of 16 December 2015 was published in the French government’s Official Journal on November 14th, 2019.
According to Article 201 of the Pacte Act of May 22nd 2019, the Order’s provisions have entered into force on December 11, following the day of the publication of its decree of application. However, the provisions relating to invalidity or revocation procedures will enter into force on April 1st, 2020.
French Trademark law will be significantly amended and, among all of the modifications, the following should be noted.
The requirement of a graphic representation is abandoned to be replaced by a “representation on the register in a manner which enables anyone to determine the clear and precise subject matter of the protection afforded to its proprietor”, in order to make the application of “non-traditional” trademarks possible and to enable applications by updated technical means.
The absolute grounds for refusal now include Appellations of origin, geographical indications, traditional terms for wine and traditional specialties guaranteed, and earlier plant variety denominations.
Provisions relating to collective trademarks are amended and certification trademarks are superseded by guarantee trademarks.
Only applications filed from the entry into force of the order, which means filed from the next day following the day of the decree’s publication, are concerned. The same will apply to applications to extend international trademarks.
The administrative opposition procedure will be substantially modified:
- The procedure is now available to new prior rights. In addition to the current basis, proprietors of earlier company names, commercial names and domain names which do not apply only locally, will be entitled to file a notice of opposition, if there exists a likelihood of confusion for the public. So might also owners of trademarks having a reputation, when the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. The opposition procedure will also be opened up to public entities in the case where the later trademark is detrimental to the name, the image or the repute of a public inter-municipality cooperation establishment or to the name of a public entity, if there is a likelihood of confusion for the public. Besides, opposition will also be available against trademarks filed in their own name by an agent or representative of the proprietor of the earlier trademark without the proprietor’s authorization. Several earlier rights may henceforth be invoked.
- When the earlier trademark is registered for more than five years, the proprietor of the earlier trademark shall furnish proof upon request of the defendant, that during the 5-year period preceding the application date of the opposed trademark, the trademark has been put into genuine use in connection with the goods or services which serve as basis of the opposition.
- Procedural rules are amended. The corresponding provisions are detailed in the application decree. The appeal against the opposition decision will remain an appeal without devolving effect.
These new opposition possibilities can be used against trademark application filed as from the order’s entry into force, which means filed as from the 11th of December 2019.
Creation of invalidity and revocation procedures before FPTO:
FPTO will henceforth have competence regarding absolute or relative invalidity of trademarks and cancellation for non-use. No interest to act is required to bring an action for absolute invalidity or cancellation for non-use. FPTO will have exclusive jurisdiction regarding primarily actions based on absolute grounds of invalidity or non-use. The office will share jurisdiction with Courts regarding actions based on relative grounds of invalidity. The courts determined by regulatory means remain competent in a case where there is a connected issue of unfair competition, and remain exclusively competent regarding infringement actions, and investigative, interim or provisional measures.
The application for invalidity before FPTO could be based on several grounds and/or rights. The examination procedure is detailed in the application decree. According to Article L.11-3 of the French Civil Procedure Code, FPTO decisions will have the same effect as court rulings. Suspensive full appeal could then be filed against these decisions before the Court of Appeal. These provisions will enter into force on April 1st, 2020.
When the owner of an earlier trademark requests the invalidity of a later trademark, his action will be inadmissible if, on request of the defendant, he cannot prove that his trademark has been put into genuine use during the 5-year period preceding the date of bringing the action or that there are proper reasons for non-use in connection with the goods or services which serve as a basis in the action. It will also be the case, on request of the defendant, if the earlier trademark has been registered for more than five years, and its owner cannot prove that his trademark has been put into genuine use during the 5-year period preceding the application date of the later trademark or that there are proper reasons for non-use. Similar provisions will apply when the trademark cited as justification for action is subject to invalidity for being non-distinctive or when it is a reputed trademark for which reputation should be acquired at the date of the application of the later trademark.
There is no limitation period attached to the invalidity action, unless the action is based on a well-known trademark in the sense of Article 6bis of the Paris Convention. In this case there is a 5 year limitation period, except in the case of bad faith. However the invalidity action will be inadmissible if the applicant knew the later registered trademark and has tolerated its use for five years.
These provisions will not apply to invalidity actions filed before the Order’s entry into force.
The infringement action is extended to also cover the offer, the placing on the market or the possession notably of packaging, labels, marks or any other support on which the trademark is attached and merchandise in transit. The limitation period for infringement actions will now be 5 years from the day the right holder knew or should have known the last fact enabling him to exercise his right.
Official fees: New official fees have also been published and are applicable as from the 11th of December. The major change concerns the 3 class system. It is now possible to file and renew for one, or two classes only.
Briefly : The draft law on Orientation of Transport has been passed on November 19th by the French National Assembly (TA No 349 – Article 100) with provisions discussed in our News alert of September 27th 2019, entitled “Designs: the liberalization of spare parts in France, coming soon”.