France: The French implementation of the EU trademarks directive

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

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