France: France introduces new trademark law
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

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

France: France introduces new trademark law

Sponsored by

beau-de-lomenie.png
Hand of man signing signature filling in application form document

The new trademark law implementing the EU Directive has been applicable since December 11 and has introduced important changes.

The requirement of a graphic representation has been abandoned and a new official fees system is applicable to allow filing and renewing for one class only. Absolute grounds for refusal now include appellations of origin, geographical indications, traditional terms for wine, traditional guaranteed specialities and earlier plant variety denominations. Provisions relating to collective trademarks are also amended.

The opposition procedure is available for new prior rights: company names, commercial names, domain names and reputed trademarks.

It is also open to public entities in case there is an attempt on their name, image or repute or if there is a likelihood of confusion for the public. Opposition can also be filed against trademarks filed by an agent or representative without authorisation. Several earlier rights may be invoked in one opposition procedure.

Proof of use is now to be provided for the 5-year period preceding the application date of the opposed trademark and for all goods or services which serve as basis for the opposition.

New provisions relating to invalidity or revocation procedures entered into force on April 1 2020.  

The French PTO now has exclusive jurisdiction for actions based on absolute grounds or invalidity for non-use. No interest to act is required from the demanding party. The office shares jurisdiction with courts regarding actions based on relative grounds of invalidity. The courts remain competent when there is a connected issue of unfair competition, and remain exclusively competent regarding infringement actions, and investigative, interim or provisional measures.

The action for invalidity can be based on several grounds and/or rights. However, it is inadmissible if the prior trademark invoked was not used during the five year period preceding the date of the action except if there are proper reasons for non-use. It is also the case if this trademark has been registered for more than five years, and was not used during the five year period preceding the application date of the challenged trademark. Similar provisions apply to reputed trademarks or trademarks for which distinctiveness was acquired through use.

There is no more limitation period attached to invalidity actions, with the exception of actions based on well-known trademarks, for which there is a five year limitation period, except in the case of bad faith. However, in all cases, an invalidity action will be inadmissible if the applicant knew about the later registered trademark and tolerated its use for five years.

The French PTO has been working on the implementation of invalidation procedures by recruiting and training new people. Despite the emergency state brought about by COVID-19, they are available from April 1.

more from across site and ros bottom lb

More from across our site

Counsel reveal how a proposal to create separate briefings for discretionary denials at the USPTO could affect their PTAB strategies
The UK Supreme Court rejected the firm’s appeal against an earlier ruling because it did not raise an arguable point of law
Loes van den Winkel, attorney at Arnold & Siedsma, explains why clients' enthusiasm is contagious and why her job does not mean managing fashion models
Allen & Gledhill partner Jia Yi Toh shares her experience of representing the winning team in the first-ever case filed under Singapore’s new fast-track IP dispute resolution system
In-house lawyers reveal how they balance cost, quality, and other criteria to get the most from their relationships with external counsel
Dario Pietrantonio of Robic discusses growth opportunities for the firm and shares insights from his journey to managing director
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Law firms that pay close attention to their client relationships are more likely to win repeat work, according to a survey of nearly 29,000 in-house counsel
The EMEA research period is open until May 31
Practitioners analyse a survey on how law firms prove value to their clients and reflect on why the concept can be hard to pin down
Gift this article