• France passes new order that could transform the country’s trademark ecosystem
  • Local experts explains how even small points of the new order could have big impact
  • Reveals that some French territories, including New Caledonia, not currently covered

Earlier this month, the EU trademark directive was implemented in France, with the text set to come into force before 15 December 2019. In an exclusive guest post, Herald Avocats partner Richard Milchior explains how international brands should be mindful of the changes, as even the smallest points could have a significant impact.

As the INPI announced on November 15, the new provisions will be implemented by the registry and are aimed to facilitate access to the protection of brands. Major changes include allowing the filing of new types of trademarks (including sound, animated or multimedia marks), and adapting a system of collective marks. While many of the changes will be implemented next month, a new provision relating to the procedure for nullity and forfeiture of mark will start from the first of April 2020.

The new order will introduce numerous significant changes that will potentially transform the French trademark ecosystem. To find out how, ichard Milchior has penned a guest column on some of the new articles in the order that brand owners should be aware of and, in some cases, must prepare for.

Guest analysis

The aim of this column is not to comment the whole new French order since it is mainly an implementation of the EU trademark directive (EUTMD). In fact, it is quite possible that we will realise in the years to come that the implementation is not fully correct and that there will be some preliminary rulings needed by the CJEU to construe the French order in the light of the EUTMD.

However, importantly, I will look at aspects of the order that should be of interest to foreign owners of French trademarks which were not requested by the EUTMD. Strangely enough, after years of negotiating a more complete harmonisation than the first one already made in 1989, we have a text which by its addition may partially destroy the harmonisation or disharmonise the EU trademark system.

For example, new article L7113 of the French IP code states that a trademark cannot be registered, or if it is already registered can be declared invalid, due to the existence of an earlier IP right having effect in France. The article lists, as before, a series of earlier rights, but now includes 11 type of rights that can be used. Needless to say, the addition of new prior type of rights which may be the basis for a relative grounds of refusal or of cancellation will render it significantly more difficult to search for a potentially registrable right.

To highlight this, under point 4° of article L7113, a prior right could be a domain name if its scope is not only local and if it creates a likelihood of confusion in the mind of the public. Since any (or almost any) domain name can be accessed worldwide, when will it be considered that it only has a local scope? Furthermore, will it be sufficient to own a domain name with a parking page to forbid any future registration of a mark? Will the examination of the likelihood of confusion take into consideration the real use of a domain name and the products/services for which it is used, or just the domain name? Finally, what will be done when the domain name is identical or similar to the word of a semi figurative mark?

It appears, then, that some interesting questions will have to be tackled by the registry and by the courts.

Going deeper into this issue, under point 9° of article L7113, the image or notoriety of an “establissement public de cooperation intercommunale” (otherwise known as EPCI) is now added as prior rights to a name. For those not aware, this concerns a public body which is a joint venture between several cities to handle services or utilities. The list of those EPCI is not easy to find, so this could prove problematic for brand owners.

Furthermore, under point 10° of article L7113, the name of a public entity is also designated as prior rights if it creates a likelihood of confusion in the public mind. However, since there is no definition of what a public entity is, it will be interesting to find out what the case law considers as an “entité publique” (public entity) and, of course, how a search engine could be created for this.

All of this means that these prior rights could be used as the basis of an opposition in front of the office.

To complicate the issue, point 7° of article L7124 of the French IP states that an opposition can be filed based on the name of a public entity – therefore using the same language than point 9° mentioned above. However, the next point in that article does not use the wording used in the aforementioned point 10° of article L7113. Instead, it mentions when stating who can file an opposition, that it can be made by any moral person of public law acting as a public entity on the basis of the name under which this person or its services is active.

For that reason, it will not be easy to determine who has the right to do what, and it could create an interaction between the civil courts in appeal and the administrative court to solve the quagmire that this text will create.

Finally, and this is not always understood by the non-French parties, but a part of the order concerns the French overseas territories – some articles modify the text applicable to Mayotte, Saint Barthelemy Saint Pierre et Miquelon, and the islands of Wallis and Futuna (can any WTR readers place them on a map?). Nonetheless, there is nothing in the new order that concerns French Polynesia and New Caledonia, so they will continue to apply the old text. This issue may be clarified in the future, but it may have some impacts for exporters located in the Pacific and selling to those French territories.

Of course, this column primarily concentrates on fairly tiny points and not on all of the different aspects of the new French order (since this is, for the most part, similar to what most will know from the EU trademark directive). However, these tiny points could have some huge consequences, especially in regard to facing oppositions based upon newly-introduced earlier rights.

 This article first appeared in World Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe