French National Institute for Intellectual Property Adopts Implementing Legislation, Harmonizes with EU Trademark Reform

Par Richard Milchior, le 16 janvier 2020

Article publié dans Le Bulletin de l’INTA – International Trademark Association

Contributor: Richard Milchior, Herald, Paris, France
Brands and Innovation Committee

Verifier: Deborah Vincze, Vincze IP, Paris, France
Trademark Office Practices Committee

Published on November 13, 2019, French Trademarks Order No. 2019-1169 (the Order) amends French trademark law and implements EU Trademarks Directive No. 2015/2436 (the Directive). It was supplemented by the December 9, 2019, Decree 2019-1316 (the Decree), which provides implementing regulations.

The Order was submitted for public consultation in March 2019. INTA presented comments through the Europe and Central Asia Subcommittee of the Legislation and Regulation Committee and had the opportunity to attend a stakeholder meeting with representatives of the French Ministry of Finances on March 29, 2019. This was a first such stakeholder meeting for the Association in France.

The Order notably allows for the registration of new types of marks, including motion, holographic, and multimedia trademarks. In line with INTA’s recommendations, the Order also modifies the fee regime to encourage the filing of single class applications. This will help to prevent the Register from filling up with applications covering unnecessary classes of goods and services and seeks to improve the defense mechanisms available to the owners of marks and other distinctive signs. It also enlarges the list of prior rights on which opposition proceedings may be based to include the following:

– Company names;

– Commercial names;

– Store signs;

– Domain names; and

– Names of public entities and public establishments of cooperation between cities.

Furthermore, the Order creates new administrative cancellation proceedings (for annulment and revocation due to lack of use) to take place before the French National Institute for Intellectual Property (INPI). The Order also provides exceptions under what circumstances such actions will still need to be brought before the judicial courts. While the rest of the Order and Decree are already in force, this part of the Order will come into force on April 1, 2020.

In terms of defense mechanisms, the Order reinforces against infringement by allowing customs control on goods in external transit and by enabling customs to stop preparatory infringement acts.

It also indicates that a trademark owner cannot prevail in cancellation proceedings if the earlier mark on which the action is based was already vulnerable to a cancellation action. This could occur where there is a lack of distinctiveness at the time of filing, for example.

Existing rules concerning guaranty and collective marks have been modified or additional rules have also been created. The new legislation modifies the renewal procedure. The rules concerning appeal proceedings against the decisions of the Director of INPI are also modified.

Finally, the Order and Decree adapt the applicable law in French overseas departments and territories.

Certain changes brought about by the new legislation were not specifically included in the Directive, such as the possibility of filing an opposition on the basis of a prior domain name “having more than a local scope” or on the basis of the name of a public entity. Interpretation of these amendments remains unclear. For example, there is no definition of a public entity and no guidance to determine when a domain name is considered to have a merely local scope. This may create legal uncertainty and serious practical consequences for trademark owners.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.