Trademark Law

Since 11th December 2019, the new Trademark Law of France, which implements the EU Directive, is applicable in the country, and the same has introduced a few significant changes quite recently.

The need for a graphic representation has now been abandoned, and a new official fee system is applicable as well, which allows Trademark Application filing and renewal for only one class. The absolute grounds for refusal now include traditional terms for wine, geographical indications, appellations of origin, traditional guaranteed specialties, and earlier plant variety denominations. Moreover, provisions corresponding to collective trademarks have also been amended.

The opposition procedure has now been made available for new prior rights, namely, commercial names, company names, reputed trademarks, and domain names. Additionally, it applies to the public entities in the scenarios where there is an attempt on their image, name, or reputation, or if there is a probability of confusion for the general public. An opposition can also be filed against any trademark filed by a representative or an agent without authorization. Various earlier rights may now be invoked in one opposition procedure itself.

The proof of use in the opposition proceedings is now to be submitted for the five year period preceding the date of application of the opposed mark and for all the services and goods serving as the basis for the opposition.

All the new provisions concerning revocation or invalidity procedures entered into force on 1st April 2020.

The French PTO now has exclusive jurisdiction as well for actions relating to absolute grounds or invalidity for non-use. No interest to act is needed from the demanding party. The office shares jurisdiction with courts concerning the actions based on the relative grounds of invalidity. The courts remain competent as and when there is a connected issue of unfair competition, and further remain exceedingly competent in case of infringement actions along with interim, investigative, or provisional measures.

The action for invalidity can be corresponding to multiple rights and/or grounds. However, the same is invalid in case the prior trademark invoked was not in use during the five year period preceding the date of action except if there indeed are suitable reasons for the non-use. Furthermore, it is also the case if the trademark has been registered for more than five years and wasn’t in use during the five year period preceding the date of application of the challenged trademark. Similar provisions apply to the reputed trademarks as well, along with the trademarks for which distinctiveness was acquired through their use.

There is no more any limitation period associated with the invalidity actions, except for the actions corresponding to well-known trademarks, for which there exists a five year limitation period, with the exceptions of bad faith. However, in all the scenarios, an invalidity action shall be inadmissible if the applicant already knew about the later Registered Trademark and tolerated its use for five years.

The French PTO has been working diligently on the implementation of invalidation procedures by recruiting new people and further training them for the best. Despite the emergency condition brought about by the Coronavirus outbreak, the French PTO is available from 1st April 2020.