France has long provided an effective system for the protection of trademark rights. Indeed, France was one of the first countries to adopt legislation designed specifically to protect IP rights and ensure their proper defence through innovative legal tools (such as seizure).
The PACTE Act – which brings into force "EU Directive n° 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trademarks and a Decree reforming French civil procedure" – build upon this already strong foundation by providing a new legal arsenal. It came into effect in January and April 2020 and serves to strengthen trademark rights, while also giving trademark owners new defence tools that are both more efficient and expeditious than previously available legal mechanisms. We outline four of these developments below:
- Extending trademark protection to new types of marks
New types of marks– including sound marks, multimedia marks, motion marks, and patterns – can now be registered as trademarks.
- Improving the opposition procedure
An opponent may now make several claims in a single opposition and may file opposition against a trademark application on the grounds of several prior rights or signs.
Such prior rights can encompass company or corporate names, domain names, trade names (provided they have a commercial scope beyond local), registered geographical indications or applications for a geographical indication (including designations of origin) the image or name of local territorial authorities or of a public intercommunal cooperation institution, and names of public entities.
- Making trademark revocation and nullity proceedings more efficient
New laws give the French Intellectual Property Office jurisdiction over most trademark revocation and nullity proceedings – areas that historically fell within the purview of the French courts. This reform will significantly reduce the costs and duration of such proceedings, while also serving to declutter the trademark register from rights that have not been exploited or do not comply with the conditions of validity.
Nullity proceedings based on absolute grounds or on relative grounds (i.e., an earlier trademark, company name, geographical indication, territory or public entity's name) are to be initiated in front of the French IPO going forward.
- Streamlining infringement proceedings
All motions to dismiss a case based on trademark infringement must now be addressed to the pre-trial judge prior to any decision being issued on the merits. Allowing pre-trial judges to rule promptly on questions concerning trademark ownership, revocation, and foreclosure by acquiescence will free-up the courts to process merit-based cases more quickly and considerably reduce the length of most litigation proceedings.
The fifth new development in French Law relates to the Enhancement of the protection of business secrecy and confidentiality in infringement proceedings.
French judges are making increasing use in the course of infringement proceedings of the powers conferred by the Business Secrecy Act resulting from the implementation in France of the EU Business Secrecy Directive (2016/243) and are even going beyond it. They now almost systematically order upon request the establishment of confidentiality committees tasked with limiting the disclosure of documents and submissions to a restricted circle of persons who are subject to a confidentiality undertaking. They also carve out confidential information from court decisions before publishing them
These developments in French trademark law, when used effectively, can considerably increase the breadth and strength of brand owner's rights in this jurisdiction and be an important aspect of a global enforcement strategy. To learn more, contact your Gowling WLG professional to discuss these developments and the opportunities they can present for the protection and enforcement of your trademark portfolio.
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