France belatedly implements EU trade mark laws

Under the new Ordinance, which has still to benefit from an implementing Decree of the French Council of State, it will be possible for new types of trade marks to be registered in France. The law further clarifies the rights businesses will enjoy when they obtain trade mark protection.

The Ordinance also sets out the grounds for refusing the registration of trade marks, a new procedure for opposing the registration of marks, and updates rules on how the validity of registered marks can be retrospectively challenged.

With its new legislation, France has followed other EU countries, including the UK, Germany and Ireland, in implementing the EU's Trade Mark Directive of 2015 into national law. France's new laws come 10 months after a deadline for implementing the EU reforms expired.

The changes represent one of the most important changes ever made to French trade mark law. The judicial and administrative decisions that will follow as a result of the new laws will likely attract significant scrutiny from practitioners.

Scope for innovation

Article L. 711-1 of the French intellectual property code (the FIPC), which concerns the elements that a trade mark may consist of, has been amended to make it possible for businesses to file new kind of signs as valid trade marks.The requirement that a mark be capable of being graphically represented has been deleted. Now, to qualify for trade mark protection under the new law, a sign must be:

• distinctive of the goods and services, and;
• represented on the French trade mark register in a manner which enables any person to determine the clear and precise subject matter of the protection afforded to its proprietor

Unlike under the former article L. 711-1 of the FIPC and article 3 of the previous EU trade mark directive, the new law does not provide any example of signs which could be regarded as valid trade marks.

However, there is no doubt that the intention here is to open up the possibility for new signs to be filed in recognition of the technical and economic evolution in the digital age, but some examples would have been welcome. Some guidance is outlined in a recital to the new EU trade mark directive to help businesses assess what the determination of a 'clear and precise subject matter' is.

The recital states: "To this end, it is necessary to list examples of signs which are capable of constituting a trade mark, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. In order to fulfil the objectives of the registration system for trade marks, namely to ensure legal certainty and sound administration, it is also essential to require that the sign is capable of being represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective. A sign should therefore be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation offers satisfactory guarantees to that effect."

Grounds for refusal of invalidity

In trade mark law there are both absolute and relative grounds for refusing applications for trade mark protection on the basis of invalidity.

Under the FIPC, the articles L. 711-2 to L. 711-4 addressed this topic. However, these articles have now been amended and replaced by two new articles, L.711.2 and L.711.3, which outline and extend both the absolute and relative grounds of refusal and invalidity respectively.

The new article L. 711-2 introduces the concept of autonomous distinctive character, which has been established and subsequently referenced in EU and French case law on various occasions but which was absent in French trade mark legislation until now.

The law has also been updated to list domain names as prior rights that can prevent the registration of trade marks in some circumstances. The grounds of refusal or invalidity will apply to trade marks where a prior domain name has more than just a local geographic impact and where there is a likelihood of confusion between the mark and the domain name. This new provision is consistent with French case law.

Obtaining a registered trademark

The French opposition procedure has been substantially amended and improved too:

• the list of prior rights on the basis of which an opposition may be filed has been extended – article L. 712-4 of the FIPC;
• it is now possible to file an opposition on the basis of several prior rights, provided that the prior rights are owned by the same proprietor. This will lead to a welcome decrease in the opposition costs – article L. 712-4-1 of the FIPC; and
• the proprietor of the prior trade mark registered for more than five years will have to demonstrate, upon request of the trade mark applicant, that its prior trade mark is used, or has been used over the last five years, for each good or service invoked against the trade mark application – article L. 712-5-1 of the FIPC.

Rights conferred by a trade mark

Many modifications have been made to provisions that concern the rights conferred by a trade mark. They are outlined in articles L. 713-1 to L. 713-6 of the FIPC.

One of the changes means the proprietor of a registered trade mark is now entitled to prevent the use, in the course of trade in relation to goods or services, of any sign identical or similar for goods or services identical or similar, provided there is a likelihood of confusion if the signs and goods or services are not identical.

The concept of use, which is copied directly from EU trade mark law, is of high importance. According to French case law, the mere fact of filing a trade mark application was regarded as an act of infringement. Under the new article L. 713-2, the use of the sign in practice and not the mere filing of it can be regarded as an act of infringement now.

A further change means that registered trade marks which have a reputation are now protected through the trade mark infringement mechanism and not through the civil liability mechanism as it was the case before the new Ordinance. Well-known trade marks, as defined in the Paris Convention for the Protection of Industrial Property, remain protected though the civil liability mechanism.

In addition, the new article L. 713-3-2 sets out new provisions that relate to goods in transit, and put an end to EU case law established in 2011 in disputes involving Nokia and Philips. The proprietor of a registered trade mark is now entitled to prevent third parties from bringing goods, in the course of trade, into France where the trade mark is registered without being released for free circulation there, where such goods come from third countries and bear, without authorisation, a trade mark which is identical or essentially identical with the trade mark registered in respect of such goods.

However, there are qualifications to this outlined in the new article L. 716-4-4. Indeed, claims based on new article L. 713-3-2 will be deemed inadmissible if the declarant or the holder of the goods can prove that the proprietor of the registered trade mark is not entitled to prohibit the placing of the goods on the market in the country of final destination.

Revocation and invalidity of a trade mark

To reduce the costs and to shorten the procedural delay, the Ordinance creates an administrative procedure for the revocation and declaration of invalidity of a trade mark. The procedure is set out in new articles L. 716-1 to L. 713-3-1 of the FIPC. Those provisions will come into force on 1 April 2020 and will create a mini revolution for French trade mark practitioners.

The administrative procedure will take place before the French trade mark office (L’Institut National de la Propriété Industrielle (INPI)). The anticipated Decree will soon specify the forms and conditions of this administrative procedure but the INPI will be in charge of all the revocation or declaration of invalidity claims filed as initial claims, by opposition to counterclaims, provided that those claims are not filed in connection with other claims such as an infringement or an unfair competition claim.

There are two points concerning the new administrative procedure that need to be highlighted in particular.

First, a revocation claim and an invalidly claim based on the absolute grounds may be filed before the INPI by any natural person or legal entity whereas the same procedure filed before the French judicial courts can only be filed by natural persons or legal entities that are able to demonstrate an interest in the action seeking the revocation or invalidity of the trade mark.

Second, the invalidity action cannot be time barred, provided that the proprietor of the earlier trade mark has not knowingly tolerated the use of the later mark over five years.

Timings

The new Ordinance will enter into force on the same date on which the Decree will and no later than 15 December 2020, except for the new provisions related to the procedure for revocation or declaration of invalidity that will be brought into force on 1 April 2020.

Paris-based Leonore Isnard is an intellectual property law expert at Pinsent Masons, the law firm behind Out-Law.