In Intellectual Property matters, major changes in law or procedures often come into force on “April Fool’s Day”. This is the case today with the entry into force of the procedures for the invalidity and forfeiture of trademarks before the French IP Office (INPI).

Background:

During the trademark registration procedure before the French IP Office, the examiner does not classically analyze the relative criteria for the validity of the trademark. After publication of the trademark application, third parties have a two months time limit to initiate opposition proceedings against the trademark application before the INPI, conventionally on the basis of prior rights. At the end of the procedure, the examiner registers the trademark.

It is possible that the French trademark be unjustly registered, for example if the holder of previous rights badly defended his opposition or has not followed-up the deadline to file his opposition procedure.

Until now, in such cases it was necessary to initiate proceedings at the competent High Court to be able to question the validity of the trademark, with the related procedural constraints, in particular the constitution of a specific Attorney-at-law.

Change of law (L. 716-1 s. CPI)

From now on, it will be possible to initiate specific procedures before the INPI in order to question the validity of a registered trademark by raising absolute and relative grounds for refusal or by invoking a forfeiture of the rights of the trademark owner. This is the subject of the new procedures for invalidity and forfeiture of trademarks with the INPI.

With the exception of certain specific cases, the request for invalidity is imprescriptible (L. 716-2-6 CPI).

The forfeiture request concerns the five years preceding the filing of said request (L. 714-5 CPI).

The procedure applies to trademarks registered from April 1, 2020 onwards (Decr. n ° 2019-1316 dated 9/12/2019).

Risks to be assessed

If one of your competitors obtains a trademark registered by the INPI unfairly, without the validity criteria being met, the competitor may block signs unduly or even initiate, against you, a infringement seizure, a provisional prohibition procedure, an infringement action …

In such case, your innovations would be hampered in their naming by these questionable trademarks.

Recommendations

To avoid this type of situation, invalidity and forfeiture procedures offer a new option to deal with this type of problem if you have not followed-up the opposition deadline or if you wish to raise absolute grounds for refusal.

Prior to this, the most suitable situation would be to set up a surveillance of the trademarks and applications of your main competitors to determine if some are unjustified and should be the subject of an invalidity or forfeiture procedure.

The same recommendations also apply to European trademarks, for which opposition, invalidity and forfeiture procedures were already in force.

Being assisted by a Trademark Attorney makes it possible interallia to ensure that relevant arguments are filed and to limit the risks of rejection of the invalidity and forfeiture procedures.

SOTERYAH IP remains at your disposal to organize surveillance strategies for this purpose.