🇬🇧 - #5 The trademark’s opposition procedure - the big changes
The implementation of the Trademark Directive has led to important changes in opposition proceedings in both France and Germany.
Article 43(1) of the Directive provides that the Member States have to implement an efficient and fast administrative procedure for filing a notice of opposition against the registration of a trademark before their trademark offices. The aim is therefore to make the opposition procedure easier and more efficient and to encourage the parties to reach an amicable settlement.
The new list of earlier rights can be enforced in the same opposition procedure.
One of the main innovations in German and French trademark law is that, as provided in Article 43(2) of the Directive, several earlier rights may now be relied on in a single opposition, under the condition that they have the same proprietor.
In France, Article L. 712-4 of the Intellectual Property Code provides for an exhaustive list of earlier rights which may be invoked on the basis of the opposition procedure. The novelty lies in the introduction of the trademarks which have a reputation, name or company name, trade name, sign, domain name, geographical indications, name of a public body and the name, image or reputation of a local authority or a public inter-municipal cooperation body. In French law, an additional clause is introduced, which logically requires that the earlier right invoked be valid in France (which is already provided for in German law in § 13 (1) MarkenG).
Also in Germany, the list of earlier rights provided for in § 42 of the German Trade Mark Law has been extended in opposition proceedings to include protected designations of origin and geographical indications. Before the reform, German law has already assured certain basic rights such as trade names, but unlike France, Germany has been satisfied with opposition proceedings with a minimum implementation of the provisions of the Directive.
Extension of the list of persons likely to lodge an opposition
Traditionally, the opposition is filed by the holder of the earlier right, who may be represented by an agent or a lawyer, but the reform of trademark law in France and Germany has increased the scope for action. In Germany, Article 42 (MarkenG) now provides for opposition by persons entitled to invoke rights deriving from a protected designation of origin or a protected geographical indication with an earlier seniority.
In France, the Trademark reform introduces a new Article L. 712-4-1 of the Intellectual Property Code, which sets out the list of persons entitled to file an opposition. This list thus includes the authorized representatives of the earlier rights mentioned, including geographical indications, as in Germany, but adding the proprietor of the trademark without his authorization in the name of his agent or representative.
Although the two French and German regimes are very similar, it is noteworthy that German law on this subject is much less detailed than the French Intellectual Property Code.
A less expensive procedure in Germany than in France
In France, although the fee for an opposition procedure is still €400.00, the new possibility of using additional earlier rights against payment of an additional fee of €150.00 per additional right claimed simplifies the procedure and reduces costs where previously several procedures were necessary. A single procedure is now sufficient.
In Germany, the cost of the application has been increased to meet the increased demand for this procedure, but with a basic fee of €250.00 and an additional fee of €50.00 per additional earlier right claimed, it is still far cheaper than in France or for a European trademark.
The opposition fees are therefore lower in Germany than in France, in contrast to the registration fees (see our Article 3 on trade mark registration).
Simplification of the decision-making process in France
In France, the opposition procedure is no longer limited to a fixed period of 6 months, and draft decisions have been abandoned (the INPI used to propose a draft decision to the parties, which, in the absence of a challenge became final). From now on, the opposition procedure in France will begin with an adversarial investigation phase, at the end of which the INPI will decide on the opposition request and the application for registration within a period of three months. If the INPI does not make a decision within this period, the opposition request is rejected.
Procedural deadlines and the introduction of the European law cooling-off period
In France, the opposition period always expires two months after publication of the trademark application in the national register, but Article R. 712-14 of the French Intellectual Property Code provides for an additional period of one month to submit the argumentation in support of the opposition. This period is therefore extended to three months total from the publication date of the trademark application, along the lines of the German and European systems.
The introduction of a statutory “cooling off” period under Article 43(3) of the Directive is not new in France, where the Intellectual Property code already provided for the possibility for the parties to apply jointly for the suspension of proceedings for a period of six months. There is now the possibility of suspending the procedure for a period of four months at the joint request of the parties, which is renewable twice. (Article R. 712-17 CPI). In Germany, the procedure can be suspended for two months, this period can be extended again by a joint request of the parties (§42 (4) MarkenG). In European trademark system, the “cooling-off period” has already proved its worth, with the parties often reaching a mutually acceptable solution by means of a coexistence agreement.