France: The French implementation of the EU trademarks directive

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

France: The French implementation of the EU trademarks directive

ip-policy-ghana-min-final.jpg

Order No 2019-1169 of November 13 2019 relating to trademarks incorporates Directive (EU) 2015/2436 of December 16 2015 and was published on November 14 2019.

It entered into force on December 11, with the exception of the provisions relating to invalidity and revocation procedures (these will enter into force on April 2020).

As a result of this new law, the requirement of graphic representation is no longer necessary. The absolute grounds for refusal now encompass appellations of origin, geographical indications, traditional terms for wine and traditional specialties, and earlier plant variety denominations. The provisions relating to collective trademarks have also been amended. Only applications filed from the entry into force of the order are affected.

The opposition procedure is now available for prior rights, including company names, commercial names and domain names, reputed trademarks, names, images of a public entity and trademarks filed in their own name by an agent or representative. Several earlier rights may be invoked. When applicable, proof must be provided for the five year period preceding the application date of the opposed trademark for the goods or services which serve as the basis of the opposition.

Procedural rules are also amended. These new rules concern trademark applications filed as of December 11 2019.

The FPTO will have now exclusive jurisdiction regarding actions based on absolute grounds or invalidity for non-use. The office will share jurisdiction with courts regarding actions based on relative grounds. The courts remain competent when there is a connected issue of unfair competition and in relation to infringement actions, investigative, interim or provisional measures. The action before the FPTO could be based on several grounds and/or rights.

This action will be inadmissible if, upon the request of the defendant, the opposing party cannot prove that his trademark was in use during the five year period preceding the action. He needs to prove that his trademark was used during the five year period preceding the application date of the later trademark and his trademark was registered for more than five years before this application date.

There is no limitation period attached to the invalidity action except for well-known trademarks. However, tolerance of use of the later registration for five years will make the action inadmissible.

The infringement action is extended to the offer, the placing on the market or the notable possession of packaging, labels, marks or any other support on which the trademark is attached and to merchandise in transit. The limitation period for infringement actions will now be five years from the day the right holder knew or should have known the last fact enabling him to exercise his right.

New official fees are also applicable from December 11.

Aurélia Marie

more from across site and SHARED ros bottom lb

More from across our site

Attorneys explain why there are early signs that the US Supreme Court could rule in favour of ISP Cox in a copyright dispute
A swathe of UPC-related hires suggests firms are taking the forum seriously, as questions over the transitional stage begin
A win for Nintendo in China and King & Spalding hiring a prominent patent litigator were also among the top talking points
Rebecca Newman at Addleshaw Goddard, who live-reported on the seminal dispute, unpicks the trials and tribulations of the case and considers its impact
Attorneys predict how Lululemon’s trade dress and design patent suit against Costco could play out
Lawyers at Linklaters analyse some of the key UPC trends so far, and look ahead to life beyond the transition period
David Rodrigues, who previously worked at an IP boutique, said he may become more involved in transactional work at his new firm
Indian smartphone maker Lava must pay $2.3 million as a security deposit for past sales, as its dispute with Dolby over audio coding SEPs plays out
Powell Gilbert’s opening in Düsseldorf, complete with a new partner hire, continues this summer’s trend of UPC-related lateral movement
IP leaders at Brandsmiths and Bird & Bird, who were on opposing sides at the UK Supreme Court in Iconix v Dream Pairs, unpick the landmark case and its ramifications
Gift this article