France amends its Intellectual Property Code to implement EU reform on trademarks

by Tougane Loumeau (GIDE LOYRETTE NOUEL – France)

Ordonnance No. 2019-1169 of November 13, 2019 on product and service trademarks, NOR: ECOI1921594R

On November 13, 2019, the French government issued an Ordinance that deeply modifies the French Intellectual Property Code with respect to trademark law. These amendments aim at implementing European Union Directive No. 2015/2436 of 16 December 2015 that approximates the laws of the Member States relating to trademarks.

A number of these modifications do not change the substance of trademark law, as they either aim at introducing solutions that had already been established by jurisprudence into written law, or at being closer to the drafting of the Directive. Other modifications are more substantial, such as the following.

The main novelty concerns the creation of administrative actions before the French IP Office (INPI) for trademark revocation and cancellation. Up to this reform, once a trademark had been registered, actions to cancel or revoke it had to be brought before a judicial court. As of April 1, 2020, the INPI will have exclusive jurisdiction to hear (i) cancellation actions based on absolute grounds of invalidity, (ii) cancellation actions based on relative grounds of invalidity except when the prior right concerned is a copyright, a design right or a personality right (such as the name, the pseudonym or the image of the claimant), (iii) revocation actions for non-use, and (iv) revocation actions on the ground that the mark has become generic or deceptive. This rule only applies to actions which are exclusively based on such a ground. Therefore, when the cancellation or revocation action is combined with another related claim (for instance, unfair competition), judicial courts will still have jurisdiction. Judicial courts also retain exclusive jurisdiction for infringement actions, including nullity and revocation defences and counterclaims that are raised in the course of such actions.

Regarding oppositions, the reform extends substantially the list of prior rights on which the opponent may base its opposition. Formerly, an opposition could only be lodged on the basis of a trademark, an appellation of origin or a geographical indication, or the name of a territorial community. New rights notably include corporate names, trade names, signboards, domain names, as well as the names of public entities.

Another novelty consists in the introduction into French law of a new regime created by the Directive, concerning ‘collective marks’ (defined as marks that are capable of distinguishing the goods or services of the members of an association which is the proprietor of the mark from the goods or services of other undertakings) and ‘guarantee or certification marks’ (defined as marks that are capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics, from goods and services which are not so certified). This is, however, not a revolution since French law already recognized certification marks as a specific kind of collective mark.

The reform considers technological evolution and provides that trademarks no longer need to fulfill the requirement of being capable of graphical representation. They merely need to be ‘represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’.

Except for the new attributions of the INPI, which is due to go live on April 1, 2020, the reform will come into force by December 15, 2019.