06
May
2020
Major changes in the French Trademark Prosecution
Author:
teamtaomanews
The long-awaited upheaval in French trademark law is finally here!
Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks has been transposed in France, at last, following the adoption of an order dated November 14, 2019.
This transposition entails a major overhaul of French trademark law and practice in certain aspects and notably regarding the application and renewal of trademarks.
=> The end of the requirement of graphical representation
Until now, to be eligible to a protection under trademark law, a sign needed to be capable of being represented graphically. Such condition has been abandoned by the new regulation. This abonnement does not necessarily open protection to non-traditional trademarks that were previously refused, such as olfactive or gustative marks, as the legislation still requires the sign applied for to be represented on the Register in a manner which enables anyone to determine precisely and clearly the subject matter of the protection afforded to its proprietor.
Yet, some non-conventional trademarks that were rarely accepted in the past will likely be adopted more easily now, as new formats of representation will become available. For instance, with respect to sound trademarks, it will now be possible to submit audio files, while for the representation of motion trademarks or hologram trademarks, the applicant will be able to furnish video files, gifs, etc.
If opening the trademark filing to new representation formats seems to be good news for future applicants, this will necessarily generate practical issues, in particular in the context of litigation. From now on, how should be compared a traditional verbal mark and a sound mark represented by an audio file? In this specific case, what will become of the visual comparison?
This new disposition will, no doubt, change significantly the office’s practice, which would have to get creative in developing new reasonings.
=> New official taxes
While the old system provided for a single flat fee for the filing of a trademark from one up to three classes, with an additional class fee from the third class onwards, the reform abandoned it in favor of a system of one fee per class.
The same system has been adopted for the renewal of trademarks.
=> Examination
The new disposition broadens the list of grounds for refusal, especially, the number of signs that can constitute opposable prior rights to the filing of a new trademark application. This will make it even more necessary to carry out prior right searches before considering filing any trademark application, as the sign for which registrations will be sought is likely to face more types of obstacles.
Now the following applications can be refused by the French Office:
Signs consisting exclusively of “the shape or other characteristic of the product imposed by the nature of the product itself, necessary to obtain a technical result or which confers substantial value on the product”. The reference to “another characteristic of the product” is new and broadens the ground for refusal specific to shape marks, which can now be applied more broadly and to all marks, and in particular to atypical marks whose filing is facilitated.
A trademark including “appellations of origin and geographical indications, traditional wine names and guaranteed traditional specialities” protected by national or European Union legislation or by international agreements.
A trademark consisting of the name of an earlier plant variety.
A trademark that has been filed in bad faith by the applicant.
The new provision also makes the lack of distinctiveness a proper and independent ground for refusal when, in the past, it was closely link to the condition of non-descriptiveness. Distinctiveness and non-descriptiveness are now two different conditions that a mark should comply with in order to be registered.
=> A new deadline for the renewal of trademark registrations
If, in the past, a trademark could be renewed up to the last day of the expiration month, the renewal would have to be filed, from now on, before the end of the expiration date. An additional period of six months is still allowed to proceed with such a renewal, subject to the payment of an additional fee. The starting point of this 6-month grace period is no longer the day after the expiration month but the day that follows the expiration date.
Our team is at your disposal to assist you and help you to better understand all the workings of this reform.
Blandine Lemoine
Lawyer
Jean-Charles Nicollet
European Trademark & Design Attorney
Head of Legal Department
04
November
2019
EU Court of Justice “cottoned” on to trademarks and bad faith
Author:
teamtaomanews
An applicant, holder of earlier semi-figurative trademarks KOTON designating the European Union territory, filed an opposition before the EUIPO against the application for registration of the trademark STYLO & KOTON filed-for in classes 25,35 and 39. As for the earlier trademarks, the term KOTON included a cotton flower which both vowels were stylized.
The opposition was successful only in classes 25 and 35 which allowed the registration of the STYLO & KOTON trademark for the services of the class 39.
As a consequence, the applicant filed a cancellation action against the trademark for the services of the class 39 but also for the goods and services of the classes 25 and 35 on the basis of a filing in bad faith, according to Article 52(1)(b) of the European regulation No.207/2009 that was applicable at the time when the application was filed.
The cancellation division and then the EUIPO board of appeal having rejected the cancellation action, the applicant appealed to the General Court of the European Union which also reject the argument of a filing in bad faith.
The European regulation n°207/2009 of 26 February 2009 does not offer a definition of “bad faith” but strictly refers to a filing made by an applicant “of bad faith” (EUTMR, art.59(1)(b)).
The Court of Justice of the European Union (“CJEU”) has tried to define it, in particular in the Chocoladefabriken Lindt & Spüngli judgment of 11 June 2009 (ECJ, 11 June 2009, C-529/07, pt. 53) stating that the bad faith of the applicant must be assessed globally taking into account all the factors relevant to the circumstances of the case and existing at the time of filing, and in particular:
the fact that the applicant knows or must know that a third party uses, in at least one Member State, an identical or similar sign for an identical or similar product or service which creates a risk of confusion with the applied-for sign;
the intention of the applicant to prevent that third party from continuing to use such a sign;
the degree of legal protection enjoyed by the sign of the third party and the applied-for sign.
According to the General Court, the judgment of 11 June 2009, Chocoladefabriken Lindt & Sprüngli does not mean that the existence of bad faith can only be found in the hypothesis, which the Court was then questioned on, where there is use on the internal market of an identical or similar sign for identical or similar goods which are confusing with the applied-for sign. This is only a relevant factor among others to be considered (points 51-55).
By following this approach, the General Court refrained from taking into consideration, in its overall assessment, all the relevant factual circumstances as they arose at the time the application was filed. This, it should have been taken into account that the trademark owner had requested the registration of a sign bearing the stylized word ‘KOTON’ as an EU trademark not only for services in class 39, but also for goods and services in classes 25 and 35 which corresponded to those for which the applicant had registered trademarks bearing that stylized word (points. 59-60).
Moreover, the General Court raised, only for the sake of completeness, the fact that there had been commercial relations between the trademark owner and the applicant and that they had been broken by the applicant; it also refrained from examining whether the application for a trademark containing the stylized word “KOTON” for goods and services in classes 25, 35 and 39 presented a commercial logic with regard to the activities of the trademark owner (point 62).
As the EUCJ decided to cancel the judgment of the General Court and the decision of the Board of Appeal, it is for the EUIPO board having jurisdiction to take a new decision on the basis of an overall assessment which takes into account the application for the contested trademark as filed for goods and services not only in class 39, but also in classes 25 and 35.
Alexis Valot
Lawyer
Anne Messas
Attorney at law, partner
Read the decision here