The PACTE law promulgated on May 23, 2019 is now applicable and impacts, in addition to patent law, trademark law in France :

In addition to the modification of INPI fees relating to brands (including a slight increase and the disappearance of the standard deposit for three classes),

The following must be taken into account:

– the creation of new types of marks : possibility of depositing audio or multimedia files, making it possible to hear and see a sound, movement (animated) or multimedia mark (by depositing an MP3 or MP4 file without mandatory graphic representation).

– the evolution of the trademark opposition procedure: this procedure adapts to the needs of business life and extends to new enforceable rights, in particular company names and domain names. It is now possible to file an opposition on the basis of several brands or titles.

– the creation of a procedure for nullity or cancellation of trademarks for non use : while today economic operators cannot request the nullity (for holding of prior rights among others) or the cancellation of a trademark for non use (for failure to use or equivocal use) that in court, it will now be possible for them to do so directly with the INPI, a simpler, faster and above all less costly administrative procedure.

These two procedures will be implemented by the INPI from April 2020 !

It is clear that these procedures for revocation of marks, quick and inexpensive, will make it possible to clean the registers of marks already cluttered with forgotten or never used marks. These brands may be brought to the attention of third parties, or even competitors, in the context of availability research or watching service in all databases.

The fallen mark no longer has any effect and can therefore no longer be invoked against a third party, in particular that which has a later mark. The owner of the fallen mark becomes a counterfeiter.

A mark which has not been used within 5 years from the date of registration may be lost.

A mark which has been used correctly within 5 years from its registration may also be lapsed, but in an equivocal way, namely that modifications have been made to the mark so that these modifications have altered its initial fanciful character (we no longer recognizes the trademark in its fanciful elements).

It is good, in this perspective, to recall the recommendations of use :

Care should be taken, for applicants, to register their brands in accordance with the use they will make of them in the near future (5 years from the date of registration) but also distant, if they intend to acquire a brand in a lasting way.

Two cases need to be examined more precisely :

The trademark in color

The applicant will have to ask himself the question of knowing if he files the mark in color (s), if the color (s) claimed in the deposit will always be used or if he intends to change and therefore modify these colors in the to come up. In this case, it would be better to file in B&W, thus allowing the use of the mark in all colors without risking the administrative forfeiture of its mark for equivocal use. If a counterfeiter reproduces, in addition to the name, the same color or colors, the holder could always act in unfair competition, a fact distinct from counterfeiting.

The semi-figurative mark, namely a word mark in stylized letters or comprising a verbal part and a device element

Here again, the applicant must take care to foresee the use he intends to make of his mark if he deposits a stylized or compound mark, namely comprising a verbal and figurative element.

If he intends to change in the future the graphics of letters in a non-minor way or no longer use the verbal part with the figurative part or modify one of the two elements (verbal or figurative), the use will be equivocal and therefore likely to justify the cancellation of the mark.

The applicant will therefore have to file the word mark in single stick letters, even if this is to invoke facts of unfair competition if the graphics of the letters are also taken over by the infringer. He must also file for the compound mark, the two elements separately, namely by separate filings. Thus he will not lose rights on the verbal or figurative part which he continues to use. The two separate applications do not, however, prohibit the use of the two elements together.

The scope of the brand

Finally, the brand must be used for all the products and services claimed in the filing, namely that the use of the brand for some does not mean use for others even if certain products and / or services are identical (even category), or similar, or even complementary. A partial cancellation may be pronounced by the INPI.

Finally, the brand may not be used for activities (products or services) different from those claimed in the deposit, under penalty of total cancellation.

Hence the importance of properly filing a trademark in line with its activities actually carried out at the time of filing and those likely to be exercised in the near future.

The same applies to the administrative procedure for nullity of marks for the existence of an earlier mark. This is not a legal action for infringement with the obtaining of damages, or even the ban on exploitation, but only the possibility of asking the INPI to reject a later mark, already registered, because of prior rights. This procedure, being inexpensive and rapid, will obviously be frequent.

It will therefore be necessary to be vigilant in carrying out searches for the availability of brands before filing.