On October 9, 2018 the National Assembly passed a law entitled “Action Plan for Growth and Transformation of Enterprises”, i.e. the PACTE law, which has a notable impact on patents and trademarks.
- Regarding patents
On the one hand, we see a revitalization of the utility certificate. The utility certificate makes it possible to protect an invention with a short lifespan. The aim of the PACTE law is to extend the period of validity of the Utility Certificate and to promote its use among companies, particularly SMEs.
- Article 40 I.1 of the law extends the period of validity of the utility certificate from six to ten years.
- Article 40 I. 3° creates a new bridge between the utility certificate and the patent by allowing for the transformation of an application for a utility certificate into a patent application. Up until now, only the opposite was possible.
On the other hand, Article 42 bis of the Law provides that a patent application may be rejected on the grounds of a lack of inventive activity.
Finally, Article 42 of the Law provides a right of opposition to patents in order to allow third parties to obtain the withdrawal or amendment of a patent by administrative means.
This provision is intended to prevent abusive proceedings, albeit without specifying what constitutes abusive proceedings or sanctions. It remains to be determined whether the common law system will be applied (i.e. civil liability) or whether a special system will be provided.
- Regarding Trademark
Article 201 of the PACTE law empowers the government to take measures by means of an ordinance for the transposition of the (EU) Directive 2015/2436 of 16 December 2015, known as the “Trademark reform Package”, approximating the laws of the Member States relating to trademarks.
On November 13, the Council of Ministers accordingly adopted Ordinance No. 2019-1169 “on trademarks or service marks”, which profoundly modifies trademark law. The Ordinance was published in the Official Journal on 14 November and will subsequently be supplemented by a decree in the Council of State which will bring the Ordinance into force no later than on 15 December 2019.
The Ordinance brings about several changes:
– The procedures for appealing decisions of the Director General of the INPI have been amended. The appeal regimes have been precisely defined, namely that an appeal against a decision on the revocation or invalidity of a trademark is a suspensive appeal for reformation. Conversely, an appeal against a decision on the granting, rejection or maintenance of industrial property titles is an action for annulment. In addition, the rules of procedure for appeals have been aligned with the ordinary appeal procedure. For all appeals, the notice of appeal must be submitted to the court by electronic means within one month of notification by the Director of the INPI. The intervention of the public prosecutor is no longer mandatory.
– The graphic representation requirement in Article L. 711-1 is abolished. It should therefore be possible to register sound trademarks, multimedia trademarks, and motion trademarks. The protection of non-traditional trademarks is given preference.
– The definition of collective trademark is modified. A new type of trademark is created: the guarantee trademark, which can be used by several operators.
– The regime of the well-known trademark within the meaning of Article 6 bis of the Paris Convention has been clarified. From now on, the infringement of a well-known trademark is punished only in the field of civil liability, with the exception of counterfeiting.
– The prior enforceable rights and grounds of opposition have been strengthened.
From now on, the infringement of a trade name, a brand or a domain name constitutes a ground for opposition against an application for registration of a trademark. The prior right resulting from the infringement of the name, image or reputation of local authorities is now extended to public institutions for intermunicipal cooperation. Well-known trademarks and domain names have been added to the list of prior rights that a trademark must not infringe.
– The opposition procedure is modified: a formal opposition to an application for registration may be filed. The opposition procedure before the INPI is similar to the procedure in force before the EUIPO. Indeed, the obligation to file a statement and supporting documents in support of the opposition must be made within one month of the expiry of the opposition period.
– Only the effective use of the trademark to designate goods and services may constitute an act of infringement. The mere filing of a trademark is not an act of infringement.
– The INPI has the sole competence to hear applications for revocation of trademarks whatever the grounds. It is also the only court with jurisdiction to rule on applications for a declaration of invalidity of trademarks when they are exclusively based on one or more absolute grounds or one or more relative grounds derived from the infringement of an earlier trademark, a company name, trade name, sign, domain name, geographical indication, and the name of a public entity.
– The French specialized courts of first instance shall have exclusive jurisdiction to hear applications for a declaration of invalidity of trademarks filed principally where they are based on at least one ground resulting from an infringement of the copyright, design rights or personality rights of a third party.
The specialized courts have exclusive jurisdiction for any application for a declaration of invalidity or revocation of a trademark, whether as a principal or counterclaim, where such an application is related to an action for infringement, unfair competition or contract.
– Invalid actions become imprescriptible (Article L. 716-2-6). Only the well-known trademark, within the meaning of Article 6bis of the Paris Convention, shall remain subject to a five-year prescription period.
– The commencement date for the prescription of infringement proceedings is 5 years from the day on which the holder of a right became aware, or ought to have been aware, of the infringement, thereby enabling him to exercise such right.
– The possibility of renewing the trademark one year before the end of the term of protection shall be available only for trademarks whose term of protection expires one year after the entry into force of the Ordinance.
The changes to the Ordinance and its implementing decree shall enter into force on the day following the publication of the Ordinance, except for invalidity and trademark revocation proceedings, which shall be effective from 1 April 2020.