Since April 1st 2020, a new trade mark revocation proceeding has been implemented with the French Trade Mark Office (INPI). This proceeding may now be filed directly before the INPI by any stakeholders whereas before you had to go to court.
A trade mark can only be declared revoked by a decision of the director of the INPI:
if the proprietor of a trade mark has not put it to genuine use for the goods or services for which the mark is registered for an uninterrupted period of five years, or;
if the trade mark has become through the proprietors own fault, the common name in the trade for a product or service in respect of which it is registered, or;
if the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
The INPI has taken about thirty decisions on revocation proceedings during the first year of application. The office decides on the application for revocation of a trade mark, following an adversarial procedure which includes an investigation phase.
Our legal tips to the trade mark owners
Make sure you collect and keep proof of genuine use of your trade mark in connection with the goods or services for which it has been registered from the date of registration and as long as the trade mark stays active.
To that extent, the concept of genuine use is therefore of central importance. In a decision on 15 March 2021, the INPI explained that the genuine use of a trade mark “cannot be proven by probabilities or presumptions, but must be based on concrete and objective elements that demonstrate an effective and sufficient use of the trade mark on the market in question”.
The genuine use must take place in France and the INPI carries out a detailed analysis of the elements provided as proof of genuine use of the contested mark such as the relevant period, the place of use, the nature and extent of this use, as well as the existence of proper reasons for non-use.
Our legal tips to the stakeholder willing to apply for the revocation of a trade mark
Make sure that the registration procedure of the trade mark you want to see revoked has been fully completed for more than five years before applying.
This period of five years must be considered very carefully by any stakeholder willing to apply for the revocation of a trade mark because the admissibility of the claim will partly depend on it.
A trade mark cannot be filed for revocation during a period of five years starting from the registration date at the earliest. During this period, the proprietor of a trade mark is protected against any application for revocation of his trade mark.
But in a decision on 3 March 2021, the INPI logically considered that the beginning of the five-year period for an international trade mark designating France was not the registration date (7 December 2015), but four months after the publication of this trade mark in the WIPO Gazette of International Marks (16 May 2016).
The application for revocation of the trade mark filed on 13 December 2020 was therefore rejected as inadmissible, leaving enough time to the lucky trade mark proprietor to put his trade mark to genuine use and save it from revocation.
Reimbursement of costs
The winning party shall be allowed by the INPI a maximum amount of €600 for the written phase, €100 for the oral phase, if any, and €500 for the representation costs. In the event of partial revocation of the trade mark, the parties shall bear their respective costs.
In most cases, the new revocation procedure successfully leads to a declaration of revocation without an adversarial discussion because the trade mark proprietors generally do not react. The objectives of the trade mark law reform to make the trade mark register less congested and to facilitate the trade mark proceedings appears to have been achieved.