Continuing the review of the changes in the opposition procedure made by the French draft orders transposing the “Trademark reform package”, we will now focus on the conduct of the procedure.
The conduct of the amended opposition procedure
An opposition procedure has been provided for a long time by Article L 712-5, but it is rather concise, as it merely states that the procedure must be contradictory. The procedure itself is detailed in Article R 712-16. It specifies that the opposition must be notified without delay and gives the applicant two months at least to submit his observations and to possibly choose a representative. The parties may then submit their observations during a period of at least two months, subject to any closures or suspensions. The National Institute of Industrial Property (INPI) then publishes its decision. Though the article R 712-16 indeed indicates that the draft decision is notified to the parties so that they may challenge it if they wish to do so, no indication is provided as to the duration of this period or even how many comments may be submitted. Emphasis is placed on respecting the right to be heard, as shown by the obligation for the parties to notify any comments f to the other.
In order to comply with the “Trademark Package” directive, the French government has drafted a new article L. 712-5 and a new article R. 712-16-1, which both detail the stages of the opposition procedure.
Firstly, an investigation phase allows the opponent and the applicant of the contested trademark to debate. The opposition is notified to the applicant, who then has two months following the publication of the registration to submit written observations. He must also provide his identity and the information required to establish the existence, nature, origin and scope of his rights, the references to the application for registration, the disputed goods and/or services, the fee payment receipt, and the power of attorney of his representative, if applicable. The changes thus made are about the delay granted for providing these various documents, which can be extended by one month, except for the communication of the fee payment receipt. Previously, the deadline was two months for all of these documents, except for the power of attorney, which had to be provided within one month.
Furthermore, the applicant may ask the opponent to produce documents establishing that his trademark has been genuinely used, if it has been registered for more than five years. In such a case, the opponent has one month to submit his comments and to contest any documents he may have received. A third and final adversarial exchange of one month may then take place, without the possibility, however, of raising new claims.
Oral observations may be presented during this time, in accordance with the procedures laid down by the Director General of the INPI.
Finally, a decision on the opposition is taken within three months. Failing this, this, the opposition is deemed to have been rejected (this period may be suspended, as provided for in the new Article R. 712-17.
As a result, the opposition procedure is now circumscribed in clearly defined delays. The number of exchanges between the parties, as well as the time allowed to provide documents for the file, or observations, is limited in a concern of speed and efficiency.
The opposition procedure would thus evolve both as regards its conduct, which is now specified and clarified, and in regards to the rights which may be invoked, and their holders. The changes would allow French law to take into account development in practice by giving priority to the protection of holders of previous rights.
To be continued…