New opposition procedure against applications for French trademark registrations and change of scale pertaining to taxes to be paid in case of opposition, filing and renewal of French trademark registrations.

Jérémy Cardenas – December 26, 2019

Decree 2019-1316 of December 9, 2019 relating to “goods or services trademarks” and decree of the same day relating to “taxes pertaining to procedures before the National Institute of Industrial Property” taken in application of Ordinance n ° 2019-1169 of November 13, 2019  came into force on December 11, 2019.

Two decisions of the General Director of INPI dated December 11, 2019 supplement the above-mentioned texts.

Among the immediate consequences, it should be noted in particular:

1/ The creation of a new opposition procedure against the applications for registration of French trademarks:

–          The period for opposing a trademark registration application remains two months as from the date of the publication of the application, but the opponent can file a “formal” opposition and then -within an additional period of one month – provide the office with additional elements and notably a statement of grounds related to the comparison of goods and services and to the comparison of signs (Article 4 II. of Decision 2019-158 of 11 December 2019);

–           The opponent can invoke his rights on an earlier mark but also each right referred to in article L.712-4 of the Intellectual Property Code and in particular: reputation of an earlier mark, a name or a company name, a domain name…;

–        The opposition action becomes a truly adversarial procedure and it is now possible for the opponent to respond to the applicant’s observations;

–          Upon request from the applicant, the owner of an earlier mark which has been registered for more than 5 years has to evidence (a) the genuine use of its mark or (b) the legitimate reasons related to the non-use and for each of the products and / or services invoked (and not for just one, as in the previous regime).

Our analysis and our recommendations: this reform enables holders of prior rights to fight more effectively against the acquisition of a trademark right by a third party, without resorting to heavy and costly legal proceedings. However, great attention will have to be paid to the new formalism introduced by this reform, as special requirements up to the numbering and presentation of the documents referred to in support of the opposition have been introduced.

2/ The modification of the scale pertaining to taxes to be paid in matters of opposition, filing and renewal of French trademarks, and in particular the abandonment of “flat-rate” taxes covering a trademark filing or renewal operated from one to three classes: from now, each additional class beyond the first class gives rise to an additional tax of Eur. 40.

Our analysis and our recommendations: this reform is likely to limit the scope of applications and renewals in the case of classes that are not of certain interest. It should therefore be welcomed taking into account the state of saturation of the brand registers but, more than ever, this state of saturation must command the greatest attention when drafting the specification of the products and services in order to obtain strong trademark right.