Modernising the French trademark law

Modernising the French trademark law

Provided for by the “PACTE” Act of May 22, 2019, the Ordinance of November 13, 2019 and the implementing Decree of December 9, 2019 have completed the translation into French law of the Directive (EU) 2015/2436 approximating the trademark laws of the Member States, with full compatibility with the Regulation (EU) 2017/1001 on the European Union Trademark.

This reform of French trademark law is the most important one for many years; among the changes resulting from these texts, we find it useful to draw your attention to the following:

1 – Signs eligible for registration as trademarks and filing fees

• • the removal of the graphic representation requirement will promote the filing of audio, multimedia or moving image marks in the form of MP3 or MP4 files;
  • the single official fee system for the first 3 classes of goods and services covered by the application is replaced by a fee per class, which allows a lower rate than before for a single class, but a higher one as soon as two classes are concerned; this reflects one of the objectives of the reform, to deter applicants from claiming or maintaining a monopoly in relation to activities for which they have no direct interest;

2 – Overhauling and strengthening the opposition proceedings, approximating them to the European proceedings

• • it is now possible to base an opposition not only on a trademark, but also under certain conditions on other prior rights, such as corporate name, trade name, sign or even domain name;
  • several earlier rights belonging to the same owner may serve as basis of a single opposition, upon payment of additional official fees;
  • a simple statement of opposition, only mentioning the identity of the parties and the rights at issue, may be made with the PTO, the opponent having an additional period to provide his statement of means;
  • the adversarial part is expanded and can give rise to several exchanges between the parties; the overall duration of the proceedings will therefore be lengthened ;

3 – Simplification of the invalidity action and of the revocation action for non-use, by the introduction of an administrative procedure before the PTO

• •  as of April 1, 2020, PTO’s jurisdiction will be exclusive for main revocation actions and main invalidity actions based on certain grounds (absolute grounds, trademark, corporate name, trade name, sign, domain name, designation of origin and geographical indication, etc.);
  • invalidity actions based on copyright, design or personality rights, as well as other trademark invalidity and revocation actions filed as a counter actions, remain under the jurisdiction of the specialized judicial Courts;
  • the legitimate interest in acting in invalidity or revocation is no longer necessary;

4 – Amending the system of collective marks

• • the name of guarantee mark is changed from that of “collective certification mark”, to avoid confusion with the concept of certification within the meaning of French law;
  • there are now two separate legal systems, one for collective marks and the other for guarantee marks; Both must, however, be subject to regulations governing use;

5 –  Only the actual use of the sign to designate goods or services may constitute an act of counterfeit, excluding the mere filing as a trademark;

6 – The appeal procedures against decisions of the General Director of the PTO are approximated to the general law appeal

• • in appeals against decisions on the issuance, rejection or maintenance of rights, the Court of Appeal annuls the contested decision or dismisses the appeal;
  • appeals against decisions on the revocation or invalidity of trademarks are suspensive reversals on appeal, for which the Court considers the whole dispute;

7 – The new provisions became effective on December 11, 2019

• • therefore, innovations related to the opposition proceedings apply to trademarks applications filed since this date;
  • the administrative invalidity or revocation procedure will come into force on April 1, 2020.

Please feel free to contact us for any advice adapted to your situation!