Understanding the French Trademark Office INPI Decision of October 7, 2024: Implications for Trademark Opposition Procedures
On October 7, 2024, the French National Institute of Industrial Property (INPI) delivered its much-anticipated ruling in case NL 23-0255. The decision, which examined the interplay of trademarks, trade names, and domain names under intellectual property law, rejected LPB SAS’s nullity claims against the contested mark “Les P’tites Bombes LPB.” This ruling highlights critical principles in trademark opposition proceedings, offering key insights into risk of confusion, proof of usage, and procedural nuances.
Understanding the Background of the Dispute
Parties and Context
The case involved LPB SAS, the claimant, challenging the trademark “Les P’tites Bombes LPB,” registered in May 2019. The opposition was based on earlier rights, including:
- The corporate name “LPB”;
- The trade name “Les P’tites Bombes”;
- The domain name lespetitesbombes.com.
LPB SAS argued the contested trademark created a risk of confusion due to the similarity of signs and overlapping goods and services.
LPB SAS argued a risk of confusion, asserting similarity in signs and overlapping goods and services.
Legal Analysis
Applicable Law
The contested trademark was evaluated under provisions in place at the time of its registration. Articles L.711-2, L.711-3, and L.714-3 of the French Intellectual Property Code set forth conditions for nullity, requiring proof of:
- Earlier rights such as trade names or domain names;
- A likelihood of confusion between the contested mark and these earlier rights.
Earlier Rights
Under French intellectual property law, trademarks can be opposed based on earlier rights, including:
- Corporate names: Identifiers of legal entities conducting business. The INPI confirmed LPB SAS’s prior use of its corporate name for wholesale fashion activities. However, the institute found no evidence linking LPB SAS’s corporate name to goods or services overlapping with the contested mark, and insufficient demonstration of confusion due to differences in the signs’ overall impressions.
- Trade names: Commercial identifiers associated with a specific business reputation. While LPB SAS substantiated limited usage of its trade name, the INPI held that the claimant failed to demonstrate nationwide recognition.
- Domain names: Online identifiers with established goodwill or recognition. LPB SAS asserted long-standing exploitation of this domain for e-commerce. However, most evidence provided, including web analytics and sales data, was dated after the trademark’s registration. As a result, the INPI ruled out effective use predating May 2019.
Likelihood of Confusion: A Holistic Perspective:
The INPI evaluated confusion using the following factors:
- Visual and phonetic differences: The contested mark and earlier rights shared limited similarity.
- Distinctiveness: The claimant failed to show that the earlier rights were distinctive enough to create confusion.
- Consumer perception: An average consumer with moderate attention would not likely confuse the contested mark with the earlier rights.
The cumulative analysis negated the existence of a risk of confusion.
Practical Implications for Businesses
Clarifying the Burden of Proof
The decision highlights the necessity for claimants to present robust, contemporaneous evidence of their earlier rights’ usage and recognition. Post-registration documentation cannot substantiate claims of prior use. Claimants must demonstrate:
- Effective prior use of earlier rights;
- Nationwide recognition where applicable.
Scope of Trademark Nullity
This decision underscores the need to narrowly tailor nullity claims, ensuring:
- Clear alignment between earlier rights and the contested mark’s goods and services.
- Direct evidence of overlap and potential consumer confusion.
Broader Legal and Strategic Takeaways
From a strategic perspective, this case exemplifies the challenges businesses face in protecting legacy rights against newer trademarks. Businesses must maintain comprehensive, dated records of usage, reputation, and consumer recognition to safeguard their intellectual property and support future litigation or opposition.
Procedural Changes in Trademark Opposition
The case reflects procedural shifts in French trademark law, notably:
- Stricter evidentiary requirements.
- A more streamlined opposition process.
To succeed in nullity claims, opponents must present:
- Detailed documentation of prior use.
- Proof of consumer recognition.
- Clear articulation of harm resulting from potential confusion.
Conclusion
The INPI’s decision in NL 23-0255 sets a high bar for nullity claims and reinforces the importance of proactive intellectual property management. For trademark holders, the ruling serves as a critical reminder to document and safeguard rights effectively.
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FAQ
What is a trademark opposition in France?
A trademark opposition in France is a legal procedure allowing the holder of earlier rights (such as a prior trademark, trade name, or business name) to oppose the registration of a later mark that may infringe upon their rights. The opposition must be filed with the French National Institute of Industrial Property (INPI) within two months from the publication of the trademark application in the Official Bulletin of Industrial Property (BOPI). The opponent must provide evidence of a likelihood of confusion between their earlier trademark and the contested application.
What is the opposition procedure for WIPO?
For International Trademarks filed under the Madrid System, opposition procedures vary depending on the designated country. The World Intellectual Property Organization (WIPO) itself does not handle oppositions; instead, once an international application is published in the WIPO Gazette of International Marks, each designated country examines the mark according to its national law. Any third party wishing to oppose the registration must do so directly with the national or regional IP office (e.g., INPI for France, EUIPO for the European Union) within the applicable opposition period.
How is EU trademark opposition processed?
In the European Union, trademark oppositions are handled by the European Union Intellectual Property Office (EUIPO).
- The opposition must be filed within three months of the publication of the EU trademark application in the EU Trademark Bulletin.
- The opponent must be the owner of an earlier registered trademark or other prior rights.
- The opposition process consists of a cooling-off period (for possible settlement), followed by an adversarial phase where both parties submit arguments and evidence.
- The EUIPO then issues a decision, which can be appealed before the Board of Appeal and subsequently before the General Court of the European Union.
What invalidates a trademark?
A trademark can be invalidated if it does not comply with legal requirements. Common grounds for invalidation include:
- Lack of distinctiveness: The mark is purely descriptive or generic.
- Earlier conflicting rights: A third party holds prior rights to a similar or identical trademark.
- Bad faith registration: The mark was filed dishonestly, such as to block competitors.
- Deceptive nature: The mark misleads consumers about the nature, quality, or origin of the goods/services.
- Non-use: If a registered trademark is not used for five consecutive years, it may be subject to cancellation for non-use.
How to deal with trademark infringement?
If you believe your trademark is being infringed, you should take immediate action to protect your rights. Possible steps include:
- Sending a cease-and-desist letter to the infringer, requesting them to stop using the mark.
- Negotiating an amicable settlement to avoid litigation.
- Initiating administrative procedures such as opposition or cancellation actions before the relevant IP office.
- Filing a legal action for trademark infringement before national courts.
- Monitoring and enforcing your rights by conducting regular brand surveillance to detect unauthorized use.
What is the action for trademark infringement?
Trademark infringement actions typically involve:
- Filing a lawsuit before a competent court: The trademark owner must provide evidence of infringement.
- Provisional measures: The court may grant injunctions to stop unauthorized use before a final decision is reached.
- Damages and penalties: Courts may award financial compensation for losses suffered due to the infringement.
- Seizure of infringing goods: Counterfeit or infringing products may be confiscated.
- Criminal proceedings (in serious cases): Infringement may be subject to fines or imprisonment, depending on national laws.
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