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  • Writer's pictureMarie-Avril Roux Steinkühler

The nullity procedure in France

Photo by Dariusz Sankowski on Unsplash

The challenge for every entrepreneur is to enhance their brand image, and this necessarily involves a Trademark protection.

The procedure for nullity is used to request the invalidity of a registered trademark. Generally, this procedure is initiated when the holder of an earlier right has belatedly become aware of the existence of an infringing trademark. This procedure thus allows the owner to enforce his rights beyond the opposition period.

It is a simple and inexpensive procedure that takes place before the INPI (Institut National de la Propriété Industrielle).

We explain the different steps of this procedure.

The trademark to which the request for nullity relates is either:

· a registered French trademark,

· or an international trademark designating France.

A request for nullity may be submitted on absolute grounds by any interested natural or legal person or on relative grounds by the holders of prior rights.

· Absolute grounds for refusal

Absolute grounds can be defined as grounds inherent to the validity of the trademark. These may include, for example, the lack of distinctiveness of the trademark, or the fact that the trademark is contrary to public policy or prohibited from use.

· Relative patterns

These are infringement of one or more of the following prior rights having effect in France:

o French or European trademark filed or registered, international trademark with effect in France,

o denomination or company name ; a reputed trademark, exclusive licence to operate;

o Domain name ;

o Designation of origin, geographical indication, name of a local authority or a public body.

Any request for nullity must be filed online via the INPI's e-procédures portal.

In contrast to the opposition, the applicant must already provide a statement of grounds when filing the application for nullity. It is therefore important to be represented by an intellectual property specialist. The appointment of a representative is mandatory when the applicant is not neither established nor domiciled in a Member State of the European Union or the European Economic Area.

Attention: The entire procedure is conducted in French. If documents in foreign languages are submitted to the INPI, they must necessarily be presented with French translation.

When should one file a request for nullity?

Here, too, the request for nullity, unlike the opposition, is not subject to a limitation period. However, this does not mean that you have free hand for life!

This is because if the holder of an earlier right has tolerated the use of the later mark in good faith for five consecutive years, he can no longer apply for the nullity of the later trademark except in case of absolute nullity.

The fees charged by the INPI for the nullity of a trademark amount to 600€. An additional fee of 150€ is payable for each additional earlier right.

What happens next?

The INPI then examines the admissibility of the nullity application and informs the trademark holder of the request for nullity. If an observation is filed within two months, the nullity proceeding will proceed. Thus, we enter the examination stage. In this phase, the observations of the two parties are exchanged at intervals of one month until one of the parties no longer replies.

Note: It is possible for the parties to jointly request the INPI to suspend the time limits in order to negotiate a coexistence agreement. Then the INPI can suspend the procedure for 4 months, renewable twice.

The INPI may suspend the time limits for various reasons, in particular when pending information and elements likely to have an impact on the outcome of the dispute or the situation of the parties, or when pending registration of an earlier right.

After this exchange of observations, the decision phase occurs. The INPI has three months from the end of the examination phase to decide whether the trademark must be revoked and deleted from the trademark register.

If the request for nullity is accepted as fully justified, the trademark is declared retroactively and absolutely invalid - i.e. the nullity takes effect on the date of its filing.

Do you want to defend your trademark in France? MARS-IP, a French law firm with offices in Paris and Berlin, represents and advises you on the defence, strategy and management of your trademarks in France, in Germany, before the European Trade Mark Office and in other countries around the world thanks to its international network.


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