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Our study of the draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, leads us today to examine the invalidity action. The owner of an earlier mark who is instituting invalidity proceedings may now be opposed by the defendant non-use of the earlier mark. In addition, the invalidity action becomes imprescriptible.

Non-use is a defense in invalidity proceedings

As French law currently stands, a trademark cannot be registered if it consists of:

• a sign which cannot be represented graphically (Article L. 711-1);
• a sign devoid of distinctive character (Article L. 711-2);
• a sign which is contrary to public policy or morality (article L. 711-3);
• or a sign infringing an prior right (Article L. 711-4).

Only the graphical representation requirement is removed by the draft orders. The other conditions of validity of a mark are still grounds for invalidity proceedings. The owner of prior rights may request the invalidation a trademark infringing his rights, while the public prosecutor may request it pursuant to all the other conditions of validity (Article L. 714-3). The owner of a well-known trademark may also initiate invalidity proceedings against a trademark registered subsequently to his own (Article L. 714-4).

The French draft orders introduce the possibility to raise as a defense in invalidity proceedings the non-use of the prior trademark. In other words, the owner of a challenged mark may argue in defense that the earlier mark has not been used seriously for an uninterrupted period of five years. The plaintiff must provide proof of this serious use. Thereupon, there are two scenarios under the new Article L. 716-2-3.

• If the earlier trademark has been registered for more than five years prior to the date of the institution of the invalidity proceedings, but less than five years before the filing of the later trademark: the owner of the mark thus challenged must provide proof of serious use during the five years preceding his application or provide adequate reasons for this non-use;
• If the earlier trademark has been registered for more than five years at the time that the later trademark is filed: the owner of the mark thus challenged will have to provide proof of serious use for the five years preceding the filing of the prior trademark and during the five years preceding his application. Here again, only adequate reasons for its non-use will be able to excuse lack of serious use.

Invalidity proceedings become imprescriptible

Invalidity proceedings are currently subject to the ordinary law prescription provided by article 2224 of the French Civil Code, namely “five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right”. Article L. 714-3 of the French Intellectual Property Code furthermore states that a trademark owner cannot institute invalidity proceedings if the contested trademark “was filed in good faith and if he had tolerated its use for five years”.

The French draft orders make invalidity proceedings imprescriptible in a new Article L. 716-2-6. Only well-known trademarks, within the meaning of Article 6bis of the Paris Convention, will remain subject to a statute of limitations of five years from the date of registration, unless the application has been made in bad faith (Article L. 716-2-7, new).

It can be argued that making invalidity proceedings imprescriptible weakens the rights of trademark owners because their rights can be challenged at any time..

The new measures put in place by the French draft orders transposing the “trademark reform package” must therefore encourage trademark owners to check with great care the validity of their sign before registering it as a trademark.

To be continued…

On May 20 2019, EUIPO and EURid, the European Registry for Internet Domains, announced in two separate press releases that they have launched a new monitoring service for domain names in .eu and .ею (See EUIPO press release and EURid press release).

According to these two press releases, this new service aims at fighting cybersquatting and bad faith domain name registrations. Since May 18, 2019, applicants and holders of European Union trademarks may opt in to receive an alert as soon as a .eu or .ею domain name, identical to their European Union trademark application, is registered.

It is specified that this new service is advantageous both in terms of speed and efficiency. It allows applicants and holders of European Union trademarks to be informed of the registration of these domain names more quickly than if they would have to monitor registrations themselves, and they are thus able to act more quickly if necessary. In addition, this service will also detect earlier the registrations of other domain names by third parties, in the event of multiple bad faith domain names registrations.

Finally, these two press releases specify the that EUIPO and EURid have collaborated since 2016 and that they signed a second letter of collaboration at the Annual Meeting of the International Trademark Association (INTA) in Boston, which was held from May 18 to May 22, 2019, thus strengthening the collaboration between these two entities.

Dreyfus is a specialist in domain names matters and can assist you in managing your domain name portfolio.

One of the main innovations introduced by the “Trademark Package” Directive of 16 December 2015 (2015/2436 EU) is the introduction of an administrative procedure for revocation or declaration of invalidity. Some countries, such as Great Britain or Germany, have already introduced this new scheme into their legislation, but this was not the case in France. As the Directive did not specify how this new procedure must be implemented, the Government undertook this task with its draft project of the “Trademark reform Package”. The draft orders introduce several new articles in the French intellectual property Code (CPI) which aim at regulating how this administrative procedure can be implemented before the National Institute of Industrial Property (INPI).

Until now, pursuant to article R. 712-17 of the CPI, the INPI only addressed the issue  of revocation for non-use if it was introduced by  a trademark owner in an opposition proceeding. The French draft orders make the INPI competent to judge an application for revocation or invalidity of a trademark in a larger number of cases.

The INPI thus becomes primarily competent to deal with applications for invalidity and revocations of trademarks, even if there is no pending litigation. The courts remain competent to deal with counterclaims, asking the court to revoke or invalidate a trademark, and for applications for invalidity as a principal based on commercial names, domain names or author rights. More generally, courts remain exclusively competent to deal with other civil actions and trademark claims, including related issues of unfair competition. The same applies for invalidity or revocation applications’ presented in a case of an infringement request (as a principal or counterclaim), or when provisional or protective measures are being enforced (Articles L 411-4 and L. 716-5 new).

The administrative procedure before the INPI is provided by the articles L. 716-1 and R. 716-1 to R. 716-11 (new) and includes an adversarial investigation phase. The INPI must decide on the application of invalidity or revocation within three months of the end of this phase, otherwise the application is deemed to have been rejected.

The application for invalidity or revocation submitted to the INPI must include:

– the identity of the applicant;

– the indications allowing to establish the existence, nature, origin and scope of the prior rights invoked;

– the references of the trademark and the goods or services covered by the application for invalidity or revocation;

– the presentation of the means;

– the proof of  payment of the fee (within one month);

– the authorization of a potential representative.

This request must be carefully prepared since once it has been made its basis and scope cannot be extended.

The instruction phase begins with the notification to the owner of the contested trademark of the action filed against him. This leads to adversarial exchanges through written observations. These written exchanges between the parties may be punctuated by oral observations. Once the instruction phase has been completed, the INPI decides on the application.

In this respect, all these INPI decisions ruling on an application for revocation or invalidity must be reasoned   (Article L. 411-5, new) and may be the subject of an action for invalidity or reform before the French Court of appeals of the applicant’s place of residence (Articles L. 411-4-1 and R. 411-19, new).

With this new administrative procedure, it is no longer mandatory to go to court. However, the invalidity of a trademark is often part of a broader litigation, which may itself concern several titles. Not all the multiple issues thus raised will be within the competence of the INPI. Consequently, the judicial judge will recover exclusive jurisdiction to rule on the case (e.g. if there is a related issue of unfair competition). Although his jurisdiction will be mainly limited to counterclaims for revocation and invalidity, the judicial judge is therefore not entirely set apart from this new procedure. The courts will retain their jurisdiction over  the more complex cases, and their role will thus be complementary to the role assigned to the INPI.

Though the INPI is given greater jurisdiction, it is unlikely that the new procedure will be less costly, simpler, and faster and that it will indeed  declutter the INPI’s registry from  many unused trademark, as it was expected.

To be continued…

Since March 17, 2019, Canada has officially become a member of the Madrid Protocol, the Nice Agreement and the Singapore Treaty. These treaties will be applicable in Canada from 17 June 2019. Following a long process of reform, Canada’s adoption of these texts was highly expected and profoundly amended the Canadian Trademarks Act.

The accession of Canada to the Madrid Protocol allows a harmonization of Canadian’s trademark law on an international level. With a single international application, Canadian applicants will now be able to file an application in more than 80 different countries. Applicants from a Member State of the Madrid Protocol will have the opportunity to designate Canada in their international applications for registration. This alignment on the international standard brings many changes to Canadian law, which has been duly amended (Bill C-31). Trademark owners will have to take this into account from June 17.

Thus, the classification of goods and services according to the Nice Classification becomes mandatory for all registration applications. The measure is applicable to new filings and unpublished pending applications. Trademarks already registered will be classified in this way when renewed.

In this respect, the term of protection of a trademark is reduced from 15 to 10 years for any trademark registered after the entry into force of these treaties in Canada. Any trademark with a renewal deadline of June 17, 2019 or later will have a renewal term of 10 years.

The Canadian Intellectual Property Office has also established a mechanism allowing a third party to bring to the attention of the Office information that affect the registrability of a trademark filing. This procedure determines whether a trademark is registrable. It is applicable only in three cases :

• if there is a likelihood of confusion with a prior trademark
• if there is a likelihood of confusion with a previously filed trademark
• if goods and services in the application for registration are identical or similar to an prior trademark.

Evidence of past use and written arguments will not be taken into consideration and the Office reserves the right to eliminate this practice in the event of abuse.

Moreover, an opposition to a trademark application may now be partial and only concerns certain goods and services designated by the application for registration. If the opposition is successful, the applicant will be able to keep his trademark application for the goods and services not covered by the opposition.

Finally, the mandatory declarations of use is removed and the registration of specific trademarks (olfactory, gustatory, etc.) becomes possible if the trademark is distinctive in Canada on the filing date of the application. Furthermore, it is no longer required to indicate whether a trademark filed in Canada has already been used in Canada or abroad.

Trademark owners are therefore encouraged to audit their portfolios of protected trademarks in Canada to understand the possible consequences of the new law. Moreover, Canada’s entry into the system of the international trademark is a tremendous opportunity to protect new brands in Canada: to be used without moderation! Dreyfus assists its clients worldwide in their brand protection and defense strategies. Do not hesitate to contact us.

In this article, we present the latest key statistics on domain name registration from a report published by Verisign in March 2019.

According to this report, the number of top-level domain names registrations (TLDs) reached approximately 348.7 million at the end of the 4th quarter of 2018, an increase of nearly 16.3 million or 4.9% in the number of domain name registrations compared to the previous year.

It is interesting to note that the number of domain name registrations in .com and .net was 153 million at the end of the fourth quarter of 2018, an increase of nearly 6.6 million or 4.5% in one year.

In addition, the number of country code top-level domain names (ccTLDs) registrations at the end of the last quarter of 2018 reached 154.3 million, an increase of nearly 8.2 million or 5.6% in one year.

Finally, domain names registered in new extensions (ngTLDs) at the end of the last quarter of 2018 were 23.8 million, an increase of approximately 3.2 million or 15.5% in one year.

It is important to establish a clear strategy for domain name registration. Dreyfus can assist you in the management of your domain name portfolio.

On February 1, 2019, a new version of the Common regulations under the Madrid Agreement and Protocol for the international trademark went into effect..

In its information notice No. 21/2018, the World Intellectual Property Organization (WIPO) details the various changes that have been made to this text. These concern:

• The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new point 7.7)
• The merger of international registrations (new Rule 27ter),
• The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b)),
• The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations,
• The publication in the WIPO Gazette of international marks (Rule 32).

The new features and the main rules concerning these procedures are detailed below:

• The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)

The new Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol specifies in its paragraph (1)(a) that “A request by the holder for the division of an international registration for some only of the goods and services in respect of a designated Contracting Party shall be presented to the International Bureau on the relevant official form by the Office of that designated Contracting Party, once the latter is satisfied that the division whose recording is requested meets the requirements of its applicable law, including the requirements concerning fees.”

Thus, the owner of an international registration may request the division of an international registration for some of the designated goods and services with regard to only one designated contracting party.

Various formalities must be respected in order to make such a division. For example, the request should be made through the intermediary of the intellectual property office concerned by the division request. Moreover, in the information notice No.21/2018, it is specified that “The Office concerned may examine the request for division of an international registration to ensure that it meets the requirements in the applicable national or regional law, as the case may be, before presenting it to the International Bureau of WIPO. The Office may also require the payment of a fee, directly to this Office, different from the fee due to the International Bureau of WIPO.”

It is the responsibility of the International Bureau of WIPO to examine the request in order to determine whether it meets the requirements of Rule 27bis and to notify the Office that submitted the request so that any irregularity can be corrected, while at the same time informing the holder. The concerned office has a period of three months from the date of the notification to correct any such irregularity. Otherwise, the request will be considered abandoned.

Finally, the information notice No.21/2018 specifies that, if the conditions are met, the International Bureau of WIPO shall record the division of the international registration with regard to a designated contracting party and then create “ a divisional international registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party, notify the Office that presented the request and inform the holder”.

• The merger of international registrations (new Rule 27ter)

The information notice specifies that “all provisions dealing with the merger of international registrations will be consolidated in new Rule 27ter of the Common Regulations” following the deletion of Rule 27(3) from the same text.

These provisions relate to the merger of international registrations resulting from the recording of a partial change of ownership, the merger of international registrations resulting from the recording of the division of an international registration and the recording and notification of such mergers.

A request for the merging of international registrations resulting from the recording of a partial change of ownership must be submitted to the International Bureau of WIPO by the holder directly or through the Office of the Contracting Party of the said holder.

The information notice No.21/2018 specifies to that matter that “A divisional international registration may be merged only with the international registration from which it was divided”. A request for the merging of international registrations resulting from the recording of the division of an international registration may be submitted only by the holder through the Office that filed the division request.

• The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))

WIPO says in its information notice No.21/2018 that: “the International Bureau of WIPO will be required to cancel, in whole or in part, as the case may be, an international registration resulting from the recording of division when the international registration from which it was divided is either totally or partially cancelled, at the request of the Office of origin, due to the ceasing of effect of the basic mark”.

• The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations

The information notice No. 21/2018 of the WIPO specifies that “a Contracting Party, the law of which does not provide for the division of applications for the registration of a mark or of registrations of a mark, may notify the Director General of WIPO, before new Rule 27bis enters into force or before that Contracting Party becomes bound by the Madrid Protocol, that it will not present to the International Bureau of WIPO requests for division of international registrations”.

The same applies to requests for the merger of international registrations resulting from a division.

Contracting Parties, having made such notifications to the Director General of WIPO, may subsequently change their position at any time and accept such requests.

Finally, this same information notice specifies that “any Contracting Party may, before new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations enter into force or before the Contracting Party becomes bound by the Madrid Protocol, notify the Director General of WIPO that either one or both of the new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be”. Contracting Parties which have sent such a notification shall again have the possibility to withdraw it.

• The publication in the WIPO Gazette of international marks (Rule 32)

Finally, the amendments and points detailed in the previous paragraphs also have an impact on Rule 32, of the Common Regulations under the Madrid Agreement and Protocol, regarding the publication of marks in the WIPO Gazette of International Marks. Paragraph (1)(a) of this Rule now provides that “The International Bureau shall publish in the Gazette relevant data concerning […] (viiibis) division recorded under Rule 27bis(4) and merger recorded under Rule 27ter”. Moreover, paragraph 2 provides that “The International Bureau shall publish in the Gazette (i) any notification made under Rules […], 27bis(6), 27ter(2)(b) or 40(6) […]”.

The international brand system is becoming more and more technical. Dreyfus can assist you in your brand protection strategies in all countries of the world.