France - Cancellation proceedings before the French IPO (trade marks)

The long-awaited administrative cancellation actions are now available in France. Since 1 April 2020, most cancellation actions have become administrative proceedings and must be filed with the French IPO (Institut National de la Propriété Industrielle - INPI). The French IPO’s decision of 1 April 2020 outlines the formalities of the new cancellation actions.

The newly created cancellation department handling any cancellation action filed since 1 April comprises one team leader and six lawyers.

Competence

According to Article L.716-5 of the French Intellectual Property Code (IPC), the French IPO has exclusive competence for most cancellation actions. Only invalidity actions based on earlier copyrights, designs, surnames, pseudonyms etc. remain judicial proceedings and must therefore be filed before the relevant courts.

What type of actions

The cancellation actions which have now become administrative proceedings in France can be split into two categories: the invalidity actions and the revocation actions.

Invalidity actions based on the following grounds:

• Absolute grounds
• Relative grounds:
  Earlier trade marks, earlier trade marks with a reputation, earlier marks with a reputation within the meaning of Article 6 bits of the Paris convention, company or trade name, domain names, geographical indications, names of public entities, unauthorised filings by an agent
• Additional grounds for certification and collective marks

Revocation actions based on the following grounds:

• Lack of genuine use
• Trade mark which consists exclusively of signs or indications which have become customary
• Trade marks which are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or service
• Additional grounds for certification and collective marks

One application cannot be both an invalidity action and a revocation action. However, each of those can be based on several grounds. Invalidity actions based on relative grounds can be based on several earlier rights.

What are the costs?

The official filing fees per cancellation action are 600€. If more than one earlier right is used as a basis of an invalidity action, 150€ will have to be paid per additional right.

The losing party will have to bear the costs of the winning party. It remains to be determined how those costs will be calculated: will there be fixed fees like for EUIPO proceedings or will they rather be based on the fees applicable in the judicial system. French practitioners are eagerly awaiting the relevant decree.

Timeline

The French IPO’s goal is to issue a decision within 10 months from the filing of the cancellation action.

Applications for cancellation are filed online and must include a statement of grounds. The only exception are revocation actions based on lack of use for which no statement of grounds must be submitted.

Once the application has been filed online, the proceedings start and are split into three phases:

• Instruction phase (1 month)
• Adversarial part of the proceedings (up to 6 months)
  • Written part of the proceedings: up to three rounds
  • Hearing: on a party’s or the IPO’s request
• Decision taking (up to 3 months)

Umami’s comments:

• The publication of the application including the list of contested goods/services on the French IPO’s website is welcomed news for practitioners.
• More than ever, it is essential to keep the details of the trade mark owner and its representative up to date. Indeed, applications for cancellation actions will be notified to the owner or the representative on record per normal post. This implies a change of practice for practitioners as details could only be updated upon specific events (renewals etc.) in the past. Records can now be updated for a fee (27€). We strongly recommend keeping the records up to date.
• Defendants can limit their trade marks during the course of the proceedings thereby provoking the closure of the proceedings or the limitation of the scope of the application to cancellation. However, applicants can claim to have a legitimate interest to obtain a decision despite the limitation. It will be interesting to see what can constitute a legitimate interest. Will the mere willingness to have a decision on record (for example to use it as a dissuasive means against other parties) be enough?
• Be careful of the short turnarounds! Aside from the defendant’s first observations in reply, the parties are given only one month to file their observations in reply. This is a very short turnaround when evidence has to be gathered. Joint suspensions are available but, so far, no unilateral extensions of time are being talked of.
• The usual representation rules apply.
• Any person can file an invalidity action based on absolute grounds or a revocation action without having to prove any legitimate interest. French companies have expressed their fear over this point as anyone will be able to challenge their trade marks. This will also lead to an increase of actions filed via strawmen.
• The French IPO has declared its willingness to assess each of the earlier rights invoked and not to limit its assessment to the best earlier right. By contrast, the EUIPO will limit the scope of its decision to the assessment of one earlier right for reasons of economy of procedure. The French IPO’s approach is honourable – and justified by the charging of an extra fee for each earlier right – but might be idealistic. This might change once the volume of applications increases.

As a French qualified lawyer admitted to the Paris bar, Julie can help you with your cancellation actions in France. Feel free to contact her.