Administrative Invalidation And Revocation Actions Now Available

• Published date: 10 June 2020
• Author: Mr Tommas Balducci
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Fross Zelnick Lehrman & Zissu, PC

As discussed in our February 2020 article, a new French trademark law was passed in November 2019 to meet the requirements of EU Directive 2015/2436 and streamline European trademark practice. While the majority of the changes were implemented on December 16, 2019, the procedural changes concerning invalidity and revocation actions, including the transfer of jurisdiction over such actions from the local courts to the French Trademark Office (the "INPI"), entered into force on April 1, 2020.

Jurisdiction
Shifting invalidity and revocations actions from court-based litigations to administrative proceedings was intended to make it easier, more affordable, and more time-efficient for interested parties to bring such actions. In the case of revocation actions, the shift was also intended to promote the clearing of deadwood from the French Trademark Register.

Under the new trademark law, the INPI now holds exclusive jurisdiction over petitions for trademark revocations and invalidations in the following instances, as long as no other legal issue or claim is also raised:

• Revocation petitions under any basis, namely where
  • a registered mark has not been used within an uninterrupted period of five years after registration;
  • due to the actions or inactions of its owner, a registered mark has become the common name for a good or service within its respective trade; or
  • due to the actions or inactions of its owner, the mark has become liable to mislead the public in regard to the nature quality, or geographic origin of the covered goods or services.
• Invalidation petitions based on
  • any absolute ground; or
  • the relative grounds of a prior trademark right, corporate name, appellation of origin or geographical indication, or name of a local authority or public entity.

However, the French courts of first instanceretain exclusive jurisdictionin the following instances:

• where a petition or counterclaim seeking invalidation or revocation (based on any grounds) is made as part of another action falling within the court's jurisdiction (e.g., infringement or unfair competition actions); or

• where a petition for invalidation is brought as a principal or sole claim based on one of the following relative grounds
  • ownership of a prior copyright,
  • ownership of a prior design, or
  • ownership of personality rights.

In order to avoid the potential manipulation of these procedures, the new trademark law establishes that the principle of res judicata, also known as...