April 1, 2022 marks the second anniversary of the entry into force of the new litigation procedures before the INPI in trademark law: invalidity actions, revocation actions, oppositions opened to new types of prior rights… This is the occasion to devote several articles to an assessment of the issues arising from the transfer of part of the French trademark litigation to the INPI.
Ordinance No. 2019-1169 of November 13, 2019, transposing Directive (EU) No. 2015/2436 of December 16, 2015, modifies the opposition procedure before INPI to align it to the existing procedure before EUIPO[1] .
In particular, the new article L.712-4 of the Intellectual Property Code considerably extends the list of prior rights that can be invoked in the context of an opposition procedure and thus increases the scope of intervention of the INPI.
Prior to the reform, only prior trademarks, geographical indications or applications for protected or controlled geographical indications, and the name, image or reputation of a local authority could be invoked to prevent the registration of a trademark.
From now on, a reputed trademark, a domain name, a name or company name, a trade name, a sign, and the name, image and reputation of a local authority or a public establishment of inter-municipal cooperation may also be invoked. Some of these rights already constituted, before the reform, relative grounds for invalidity that could be invoked before the French courts.
It should be noted that from now on, with the exception of copyrights, rights resulting from a protected design and personality rights of a third party, the prior rights that can be invoked in the context of an opposition are identical to those that can be invoked in the context of an action for invalidity.
These new prior rights can be invoked either individually or cumulatively, provided they belong to the same owner (the objective being to reduce the costs of the procedure).
This harmonizes French law with EU law, and more specifically with Article 46 of the EUMR, which itself refers to Article 8(4) authorizing owners of “another sign used in the course of trade whose scope is not merely local” to oppose the registration of a trademark (provided that, according to EU law or the law of the Member State applicable to that sign, the latter gives its owner the right to prohibit the use of a more recent trademark).
While this broadening of invocable prior rights may seem favorable to opponents, several strict cumulative conditions must be met. Among the prior rights identified in article L.712-4 of the Intellectual Property Code, the latest decisions rendered by the INPI essentially show the following prior rights (i) the trademark with a reputation (ii) the name or company name, (iii) the trade name, the sign and the domain name.
(i) The reputed Trade mark
Like the EUIPO, the INPI adopts a very didactic presentation by recalling in each decision the cumulative conditions applicable to the invocation of a reputed trademark, namely “firstly, the existence of a repute of the earlier trademark invoked, secondly, the identity or similarity of the conflicting trademarks and, thirdly, the existence of a risk that the use without due cause of the trademark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark“.
In order to determine the level of reputation of the trademark invoked, the INPI takes into consideration all the relevant elements of the case, namely, “the market share held by the trademark, the intensity, the geographical extent and the duration of its use, as well as the importance of the investments made by the company to promote it”, thus taking into account the criteria established by the European jurisprudence[2] . Proof of the level of reputation is obviously the responsibility of the person invoking it, and several types of evidence may be produced (extracts from websites, press articles, advertisements, annual sales volume, amount of advertising expenditure, notoriety study conducted by polling institutes, etc.). In addition, the reputation of the trademark must be established in relation to the goods and services on which the opposition is based[3] .
As regards the analysis of the conflicting signs, the INPI classically carries out an analysis of identity or of visual, phonetic and conceptual similarities.
The INPI then verifies the link existing between the signs in the mind of the public. For this purpose, the INPI again uses the criteria established by European case law[4] , in particular “the degree of similarity between the signs, the nature of the goods and services (including the degree of similarity or dissimilarity of these goods and services) as well as the relevant public, the degree of repute of the earlier mark (to determine whether it extends beyond the relevant public), the degree of inherent distinctiveness or distinctiveness acquired through use of the earlier mark, and the existence of a likelihood of confusion, if any[5] “. Contrary to its previous practice, the INPI does not hesitate to rely on the case law of the European courts, for example, to refuse to characterize a link between the signs on the grounds that “the earlier mark is renowned in its particular presentation, a presentation that is not repeated in the contested sign“[6] .
Finally, the INPI determines whether there is a risk of harm, i.e. whether the use of the contested application could take unfair advantage of the distinctive character or repute of the earlier trademark or could be detrimental to the repute or distinctive character of the earlier trademark, the first criterion being more widely used by the INPI[7] .
The INPI thus considered that the NARITUAL and MC STREET registrations infringed respectively on the earlier well-known trademarks RITUALS[8] and MCDONALD’S[9].
Article L.712-4 3° of the Intellectual Property Code establishes the possibility of invoking a name or a company name in support of an opposition.
Proof of existence (registration of the company name in the Trade and Companies Register[10]) of the company name or business name is necessary but insufficient. The latter must actually be used[11] .
Contrary to the requirements of the EUMR and European case law[12] , it is not necessary to demonstrate the “non-local significance” of the company name or corporate name[13].
In line with previous decisions of the French courts, the opponent must also demonstrate the existence of a likelihood of confusion. In this regard, the INPI specifies that “the existence of a likelihood of confusion must be assessed globally, taking into account numerous factors including the similarity of the signs, the similarity of the goods and services, the distinctive character of the earlier mark, the distinctive and dominant elements of the signs at issue and the relevant public.”
Thus, the reasoning adopted by the INPI is similar to that adopted when comparing two trademarks[14] . It is up to the opponent who invokes a corporate name or a business name to demonstrate that the goods and services covered by them are identical or similar to the contested mark. If not, the INPI reminds that it cannot “substitute itself for the opposing company in order to put the goods or services and activities in relation to each other“[15] .
Article L.712-4.4° of the French Intellectual Property Code now specifies that, in addition to a sign and a trade name, a domain name “similar to a trade name used online[16] ” may be invoked in support of an opposition and that it follows the same regime as a trade name and a sign.
With respect to domain names, Ordinance No. 2019-1169 of November 13, 2019 is in line with French case law[17]which allowed a domain name to be invoked as prior art in the context of a trademark invalidity action thanks to the presence of the adverb “notably” in article L.711-4 (former) of the Intellectual Property Code, which implied that the list of prior rights was not exhaustive.
The trade name, the sign and the domain name must meet several cumulative admissibility criteria. In addition to their reservation[18] , the opponent must demonstrate (i) that the sign is used in the course of trade, (ii) that it has a scope that is not merely local and (iii) that there is a likelihood of confusion.
The opponent must first demonstrate that the sign is used in the course of business and, to do so, must build up a solid file of evidence showing the anteriority of his rights. The INPI has thus refused on numerous occasions to retain a prior right, for lack of documents with probative value[19] , dated[20] or proving the continuous use of the sign from the date of its reservation or registration to the date of the application for registration of the contested mark[21] . It should be noted that this first criterion is essential since if it is not characterized, the INPI (as the EUIPO did before[22] ) will not examine the other criteria.
The second criterion of “scope other than local” replaces the requirement of knowledge “on the whole national territory“. In line with European law, the INPI seems to verify both the economic and the geographical dimension of this scope. The INPI even directly refers to the decisions of the European authorities by recalling that “the economic dimension of the sign’s scope is evaluated with regard to the length of time during which it has fulfilled its function in the life of the business and the intensity of its use, with regard to the circle of addressees among whom the sign at issue has become known as a distinctive element, namely consumers, competitors, or even suppliers, or with regard to the dissemination of the sign, for example, through advertising or on the Internet (EU Court of Justice 24/03/2009, T-318/06 – T-321/06, General Optica, EU:T:2009:77, § 37)[23] “.
Here again, the documents produced by the opponent are meticulously verified, and the opponent cannot, for example, simply assert that the domain names registered in .fr are deemed to cover the entire French national territory[24] or provide a few invoices or excerpts from the Internet site that are not corroborated by other documents[25] . This undoubtedly explains why few decisions have accepted the admissibility of these signs.
By taking into account these new prior rights, the 2019 ordinance modernizes the opposition procedure and brings French law closer to European law, thus ensuring a certain consistency. However, these new prior rights are only relatively successful in France. Indeed, they are only rarely invoked by opponents. In particular, statistics made public by the INPI in February 2022[26] show that, among the 5,666 opposition applications :
These figures seem to be explained either by a lack of awareness of this new possibility offered to opponents to invoke commercial signs or by the fear of not meeting the particularly strict criteria. It appears that the prior trademark registered as an industrial property title, which does not require proof of use to be invoked (subject to an express request by the applicant if the trademark has been registered for more than five years), remains the prior right of choice for opponents.
Nevertheless, these prior rights must be taken into consideration both by the applicants when searching for the availability of the sign, and by the opponents for whom they constitute a new opportunity, provided that the strict conditions imposed by the law are respected.
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