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Entry into force of the "Paquet Marque" [EU trademark package] in France

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Here are the first applicable changes following the publication of the Order of 13 November 2019, made on the basis of the PACTE law and transposing the provisions of the "Trademark Package" into French law.

We present here the provisions concerning the filing and renewal of French trademarks as well as the opposition procedure. The new administrative procedures for the invalidity and revocation of trademarks, which will come into force on 1 April 2020, will be the subject of a future communication.

In brief:

  • An increase in INPI fees which is intended to limit the scope of protection of new filings and renewals in order to reduce the overcrowded Trademark Register.
  • Increased requirement for proof of use that may be required in the new opposition procedure obliges the opponent to confine its application to the goods and services it uses.
  • Holders of prior rights on company names, trade names, signs, or domain names are now able to file oppositions to defend their rights.
  • The new opposition procedure is more flexible at the stage of its introduction and facilitates negotiations between parties.
 

In detail:

1. The procedure for filing French trademarks has been modified

Since 11 December 2019, the filing of trademark applications follows the new procedure.

          1.1. Concept of a sign

The requirement for graphical representation of the sign has been abolished. Non-traditional signs such as sound marks, motion marks, multimedia marks or holograms, which can be represented by new technical means (audio, video files, etc.), can be applied for.

          1.2. Revised filing fees

In order to reduce the filing fees for a single class and to ensure greater availability of signs, a fee-per-class system, starting with the first class covered by the application, replaces the flat-rate system for the first three classes.

The INPI fees for filing a trademark application in three classes are now 270 euros, instead of 210 euros before the reform.
 

                           New filing fees for French trademarks                                 

In a single class

190 euros

Per additional class

40 euros

 

2. Modified procedure for renewing French trademarks

Since 11 December 2019, trademark renewals follow the new procedure
 
          2.1. Revised renewal fees
 
As with new trademark applications, trademark renewal fees increased, encouraging reflection on reducing the number of classes.

The INPI fees for renewal in three classes are now 370 euros, instead of 250 euros before the reform.
 

                   New fees for renewal of French trademarks                         

In one class

290 euros

Per additional class

40 euros

         
          2.2. Abolishment of a trademark application combined with a renewal

 
It is no longer possible to combine the filing of a new trademark application with the early renewal of a previous version of the trademark.
 
          2.3. Modification of the renewal period
 
A French trademark can be renewed within one year before its expiry date (ten years from the filing date). This period was previously six months.
 
From now on, renewal must be performed by the trademark expiry date (rather than the last day of the 10-years anniversary month). After this date, renewal is still possible for a further six months against payment of a late fee of 145 euros.

These provisions apply only to French trademarks for which the one-year period mentioned above began to run after 11 December 2019 (i.e. expiry date after 11 December 2020).

3.  A more flexible opposition procedure
 
The new opposition procedure strengthens the protection of right holders and broadens their scope of action. It is applicable to oppositions filed against trademarks filed from 11 December 2019 onwards. Thus, the first oppositions applying the new procedure will be implemented towards the end of January 2020.
 
          3.1. Extension of the procedure
 
In addition to a trademark, prior rights in support of an opposition have been extended to include the name of a public entity, a company name, a trade name, a business name, a sign, or a domain name whose scope is not only local.
 
The new legal framework also has the advantage of making it possible to base a single opposition on several prior rights, provided that they belong to the same holder. An opposition can therefore be based on several trademarks or on a combination of trademark(s), company name, domain name, etc. However, please note that the INPI fees increase according to the number of prior rights retained in support of the opposition (new INPI fee of 400 euros for the first prior right and 150 euros for each additional right invoked, compared to 325 euros before the reform).
 
          3.2. Introduction of a new procedural timetable
 
The opposition procedure will start with a simple online form, which must then be completed within one month with the arguments and evidence in support. This new possibility favours the search for an amicable solution, since it allows the formal opposition, which is quick and inexpensive, to be used as a lever in negotiations.
 
In this respect, the opposition procedure before the INPI is now similar to the procedure applicable before the European Office (EUIPO). However, it is regrettable that, unlike the EUIPO, the INPI does not provide for the reimbursement of fees in the event that the opposition is withdrawn within the one-month period.
 

          3.3. Reinforced requirement concerning the genuine use of the trademark invoked

Genuine use of the earlier trademark subject to the obligation to use is now checked by the INPI for each of the goods or services on which the opposition is based, unless it can be proven that there are proper reasons for its non-use.

As a reminder, previously, proof of use of the earlier trademark for only one of the goods or services invoked was sufficient to make the opposition admissible. It will therefore be necessary to pay attention to the basis on which the opposition is filed, since proof of use will have to be provided for each of the goods or services invoked.

Appeals to the Court of Appeal against INPI decisions issued from 1 April 2020 will be simplified and harmonised. The new appeal system, which is similar to the civil appeal procedure, will make it possible to manage the production of acts and documents via the RPVA (online platform accessible to lawyers).

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Intellectual Property