On November 13, 2019, the French government published Order No. 2019-1169, followed by an implementing Decree on December 9, 2019. The purpose of this regulation was to incorporate into French law the EU Directive 2015/2436 and to simplify certain aspects of French trademark law and procedure.
Unless noted otherwise, the following changes were effective from December 11, 2019:
- Official fees have changed from a flat fee for one to three classes (plus an individual fee for each additional class) to an individual fee for each class.
Representation of the Mark
- The former law required a strict graphical representation of the mark, whereas the new law allows any representation that enables any person to determine “precisely and clearly” the scope of protection. This change allows for the registration of movement or multimedia marks.
- Reputation is now a ground for opposition (and cancellation); those wishing to assert reputation in an opposition may do so against trademark applications filed from December 11, 2019 onward.
- Additional new grounds are available for oppositions. In addition to prior trademark rights (and reputation, noted above), the following rights may now serve as a basis for opposition: Company name, corporate name, establishment sign, domain name, geographic indication, name of a public entity, name or reputation of a territorial community, or trademark filed by an agent.
- Under the old law, an opposition could only be based on a single prior right; therefore, those wishing to assert two prior marks needed to file two separate oppositions. Under the new law, several rights may be invoked in a single opposition, subject to the payment of additional fees.
- Previously, an opposition involved only one round of submissions. Going forward, there may be several rounds, and the Trademark Office will no longer issue “draft decisions”; instead, the Office will issue final decisions within three months from the end of the adversarial part of the proceedings.
- Another new procedure is that the parties may jointly suspend an opposition for up to one year (an initial four-month period, renewable twice).
- Previously, invalidation actions could only be filed before the French courts; now, the French Trademark Office is the exclusive venue for invalidation actions, but only the courts may entertain an action where unfair competition is also claimed. This new rule will take effect on April 1, 2020.
- For invalidity actions filed on or after December 11, 2019, there is no limitations period, unless the action is based on a well-known mark, in which case the action must be filed within five years of registration of the objected-to mark. Bad faith is an exception to this five-year limitations period. In any case, the invalidity action will be found inadmissible if the petitioner knew of the junior mark and tolerated its use for five years or more.
Proof of Use
- In the case of an opposition based upon a registration that is subject to the use requirement, use must be proven for all of the goods/services covered by that registration. Under the old law, the opposer only needed to prove use for at least one good/service. This new rule applies to oppositions against applications filed from December 11, 2019 onward.
- When the owner of a senior mark files an invalidation action against a junior mark, the action will be held inadmissible if, on request of the junior-mark owner, the senior-mark owner cannot prove that its mark has been used for five years preceding the filing date of the action and for five years preceding the application date of the junior mark. This is the much-anticipated implementation of EU Directive 2015/2436 which requires the senior-mark owner to potentially prove use during two very separate periods of time.