French invalidity and revocation actions set to become quicker and cheaper from 1st April 2020

The establishment of revocation and invalidity proceedings before national Intellectual Property offices, compulsory under EU Law, will be effective in France from 1 April 2020.

New French Law implementing EU Directive 2015/2436 introduces new proceedings for bringing invalidity and revocation actions before the French IP Office (INPI.)

The practical implication for the holders of both French and European Union trade marks is that they will be able to challenge the validity of French national marks that are relied upon in INPI or EUIPO proceedings in an easier, quicker and more cost effective way

Until now, French trade mark invalidity and revocation proceedings could only be brought before the Courts. As of 1 April 2020, the French system will in part shift to an administrative procedure that is simpler, quicker and cheaper. It will continue to also be possible to use judicial procedures via the French Courts.

The INPI will have exclusive jurisdiction over the following actions initiated on a principal basis (i.e. exclusively based on a specific ground): 

• cancellation actions based on absolute grounds of invalidity (e.g. lack of distinctiveness, application made in bad faith);
• cancellation actions based on relative grounds of invalidity, except when the earlier right is a copyright, a design right or a personality right (e.g. name, pseudonym or image);
• revocation actions based on non-use;
• revocation actions based on the ground that the mark has become generic or deceptive.

Simultaneously, French Courts will maintain exclusive jurisdiction for: 

• cancellation actions based on relative grounds of invalidity, when the earlier right is a copyright, a design right or a personality right (e.g. name, pseudonym or image);
• cancellation or revocation actions brought in connection with another related claim (e.g. unfair competition, infringement, contractual liability);
• cancellation or revocation actions brought by way of counterclaim or defence in other proceedings.

The two systems will remain linked in that INPI decisions can be appealed to the Court of Appeal, with a further appeal to the Court of Cassation.

The diversion of revocation and invalidity cases from the judicial system will have the effect of reducing costs and shortening the processing of these actions. It will be easier to challenge French trade mark rights that are no longer used, not valid or no longer valid. The hope is that this will also help to de-clutter the French Trade Marks Register.

The changes will make proceedings quicker and cheaper for trade mark owners.