Analysis – France: The Key Points of the Transposition of the EU Trademark Directive

The French Government has enacted an Ordinance on November 13, 2019 to transpose into French law the EU Trademark Directive of December 16, 2015.

 

Basically, the new French trademark regime is consistent with the existing legal regime for EUTMs: for instance, the graphical representation requirement does no longer apply which will open the possibility to file non-traditional marks such as sound marks and motion marks with the French Trademark Office.

 

• The main changes to the current French legal system affect the litigation process:

 

While the French civil courts had exclusive jurisdiction to rule on cancellation claims against a French TM registration when such claims were based on non-use, absolute grounds or relative grounds, the French Trademark Office will, as from April 1^st, 2020, have exclusive jurisdiction to rule on such cancellation claims.

 

However, the French civil courts will retain jurisdiction when the cancellation of a French TM registration is sought as a counterclaim made by the defendant in a TM infringement litigation, when the cancellation claim is based on certain prior rights (copyright, design right, a right to a personal name or portrayal), or when the cancellation of a French TM registration is sought as an ancillary claim by the plaintiff in a TM infringement and/or unfair competition action.

 

The French Government will enact before December 15, 2019, a Decree which will provide further details on the rules governing the review of cancellation claims by the French Trademark Office.

 

It is expected that the new legal regime will allow the plaintiffs to obtain the cancellation of infringing or non-used French TM registrations in a prompt and cost-efficient way without the burden of a full civil litigation before the French courts.

 

• The new French trademark regime also expands the scope of the opposition proceedings:

 

While an opposition before the French Trademark Office could be filed only on the basis of prior trademark rights, the opponent will now also be able to file an opposition against a French TM application on the basis of other prior rights such as a company registered name, a trade name, a domain name, a geographical indication, the name of a local community, the name of a Government-owned entity.

 

Also, while the opponent had so far the obligation to file separate opposition proceedings for each and any of its prior trademark rights against a French TM application, the opponent will now be able to file a single opposition on the basis of several of its prior rights.

 

Again, the Decree that the French Government will enact before December 15, 2019 will provide further details on the rules governing the opposition proceedings.

 

Stay tuned…