The Legislative Order for transposition of EU Directive 2015/2436 (the “Trademark Package”) into French law was published in the Official Journal on November 13, 2019 The decree for application of the  Trademark Package and the executive decision setting new fees for Trademarks were published and entered into force on December 11, 2019, except as regards revocation proceedings or invalidity proceedings which will become effective on 1 April 2020, this lead-time being to enable the French IP Office to organize itself in relation to these new procedures.

Among the main changes (non-exhaustive list) there may be noted :

• The possibility of filing trademark applications with no graphical representation (sound marks or movement marks in electronic formats).
• Abolition of the flat fee for filing or renewal for a trademark in 1 to 3 classes, the objective being to incite applicants to select only the class or classes of real interest. You will find herewith a schedule of  the new fees for filing/renewal, which entered into force immediately, that is to say last December 11, to the annoyance of the profession.
•  Renewal formalities may be carried out at earliest one year prior to expiry of the trademark.Reform of opposition proceedings before the French IP Office :
•  The possibility of citing a variety of kinds of earlier rights as grounds for opposition :
  prejudice to trademarks enjoying repute, company names, domain names/tradenames/signboards the coverage of which is not purely local, geographical indications, names of public bodies/public institutions/the name, image or repute of a local authority, but not including copyright.
•  The possibility of filing a “formal opposition”, without a statement of grounds, within two months of publication of the trademark. In this case, the opponent has a further month to file the statement of grounds upon which the opposition is based.
• Stricter assessment by the French IP Office in relation to evidence of use provided by the opponent with regard to goods and/or services as a basis for the opposition (this still being for
  trademarks subject to use requirements and upon request by the owner of the opposed trademark).New procedures in invalidity and revocation actions :
• As of April 1, 2020, the French IP Office has exclusive jurisdiction for direct actions for revocation, regardless of the grounds (today the courts have jurisdiction).
• As April 1, 2020, the French IP Office has exclusive jurisdiction for actions with invalidity as the main plea that are based on absolute grounds of refusal and/or relative grounds due to the existence of prior rights (today the courts have jurisdiction).
• The Courts of First Instance retain exclusive jurisdiction for:1. Proceedings associated with actions having at least one ground based on breach of copyright, design rights or the personal rights of third parties;
  2. For petitions linked to another action, such as infringement proceedings;
  3. For counterclaims for revocation or for a declaration of invalidity.

Our first practical recommendations in view of the changes set out above :

• Redouble efforts to safeguard dated evidence of use and build a document base, at the very least for your strategic trademarks, in relation to the goods and services of interest, in order to be in a position to effectively prove use of your trademarks when these are challenged by third parties either as a defense in oppositions or directly in revocation actions for non-use.
• Have any change in name or address of the owner/holder recorded against your French trademarks and International trademarks designating France, to avoid any problem of notification, this being all the more important in view of the establishment of administrative proceedings for revocation for non-use or for invalidity before the French IP Office.

CONCLUSION

The scope of this reform is broad-reaching for all trademark holders. Because revocation and/or invalidity actions brought before the French IP Office should prove faster and less costly than court proceedings, the vulnerability of national trademarks and designations of France in international trademarks will increase as of April 2020.

As an indirect consequence, it will be all the more necessary to use registered trademarks in a genuine and unequivocal manner.

The firm SANTARELLI is at your disposal to provide any explanation or additional information on the practical implications arising from this transposition of the EU Directive into French law.

Nathalie Rey