The French Government implemented the Directive (EU) 2015/2436 into the French Intellectual Property Law ("CPI") through the transposition ordinance of 13 November 2019, published in the Official Journal on 14 November 2019. Most of the changes are effective from 11 December 2019. The compulsory establishment of revocation and nullity proceedings before national offices will be effective on 1 April 2020.
The need to represent a mark graphically (Article L-711-1 CPI) is removed.
Thus, a sign may be represented "in any appropriate form by means of commonly available technology, and therefore not necessarily by graphic means, provided that such representation offers satisfactory guarantees for this purpose", with the sole condition that the representation is "clear, precise, distinct, easily accessible, intelligible, durable and objective".
This will therefore theoretically open the registration to trade marks other than graphic ones, such as olfactory, gustatory, sound or tactile trademarks, which have not been accepted until now, subject to the quality of their representation.
The French Trademarks Office ("INPI") is thinking about concrete means for enabling the representation of these trademarks.
The ordinance transposing the EU Directive reformed the opposition proceedings (article L712-4 CPI) in a substantial way by allowing the owners of prior rights to base an opposition on several prior rights and of different kinds (trademarks, company name, domain name, reputation, etc.). In addition, the upcoming regulatory part will introduce a possibility to file a “formal opposition” and to provide the complete statement of grounds within a month, expressly intended to allow the parties to negotiate an agreement (a kind of cooling-off period).
It also substantially changes the rules related to the assessment of evidence of use of the earlier trademark. Until now, it was possible to provide proof of use of the earlier mark for at least one good or service opposed in order to validate the opposition for all of the invoked goods and services. From now, the ordinance amends this provision by matching the existing European opposition proceedings, providing that the opponent must prove the use for all goods and services on which the opposition is based.
The list of prior rights that can be used to reject new applications for registration is growing, with the addition of geographical indications, traditional terms for wines, local authority names, trademark reputation, etc.
The ordinance introduces new proceedings for bringing invalidity and revocation actions with a shared competence between the INPI and the French Court (Article L716-5 CPI).
Until now, claims for revocation and nullity of trademarks fell within the exclusive jurisdiction of the French Court. As of April 1, 2020, INPI will have an exclusive jurisdiction over actions initiated on a principal basis, in particular those based on lack of distinctiveness, bad faith application, failure to use, degeneration, reputation, trademark filed by an agent, etc.
Simultaneously, the French Court maintains the exclusive competence for actions initiated on a principal basis that are not of the exclusive competence of INPI (copyrights, design patents and personality rights), for actions brought by way of counterclaim, for actions brought in connection with any other claim (unfair competition and infringement,…) and for actions brought while evidentiary measures have been ordered on the merits.
Decisions of the INPI may be appealed to the Court of Appeal, with a further appeal to the Court of Cassation, i.e. there are only two levels of appeal.
Until now, the decision of the CJEU in Philips/Nokia (Joined Cases C-446/09 and C-495/09) applied to counterfeit goods in transit: Only the goods to be marketed in the EU, or for which there was a proved risk that they would be marketed in the EU, could be seized by the customs authorities (articles L716-8 CPI).
Based on the new implementation of the articles 10 and 11 of the Directive, authorities can now withhold any suspected counterfeit goods in transit, without the need for the trademark owner to prove that they are destined for a state where their marketing is prohibited (article L713-3-2 CPI). This applies even if these goods are not to be marketed in the territory of the EU.
Lastly, the ordinance provides the possibility of prohibiting “preparatory acts” prior to an infringement, consisting of placing an identical or similar sign to the trade mark on packaging, labels, marking, security or authentication devices or any other features, and offering them for sale, selling, holding them for this purpose, importing or exporting (article L713-3-3 CPI).
Trademark filings now incur a fee per class. Previously, the French system offered a flat-rate registration fee for 1 to 3 classes (article L712-2 CPI).
Written by Géraldine Arbant, Elsa Lavaud