ICLG Trade Marks 2021 Guide - French chapter

Céline Bey and Clémence Lapôtre have written the French Chapter of the ICLG Trade Marks 2021 Guide which covers 36 jurisdictions. Céline and Clémence contribution includes common issues in trade mark laws and regulations – including legislation, application, refusal, opposition and registration.

This article was first published in the ICLG - Trade Marks.

1. Relevant Authorities and Legislation
2. Application for a Trade Mark
3. Absolute Grounds for Refusal
4. Relative Grounds for Refusal
5. Opposition
6. Registration
7. Registrable Transactions
8. Revocation
9. Invalidity
10. Trade Mark Enforcement
11. Defences to Infringement
12. Relief
13. Appeal
14. Border Control Measures
15. Other Related Rights
16. Domain Names
17. Current Developments

1. Relevant Authorities and Legislation

1.1 What is the relevant trade mark authority in your jurisdiction?

Regarding registration, the relevant trade mark authority is the National Institute of Industrial Property (Institut National de la Propriété Industrielle or INPI). The INPI is in charge of examining French trade mark applications and rules on opposition proceedings filed by the owner of prior rights. It also intervenes in the application process of international trade marks through the World Intellectual Property Organization (WIPO).

Once a trade mark has been registered, the INPI and French trade mark Courts share competence to rule on revocation and declaration of invalidity claims.

Trade mark Courts are granted exclusive jurisdiction in infringement proceedings.

With regards to French trade marks, the competent Courts are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles. However, the exclusive jurisdiction of civil Courts in trade mark matters only applies provided a trade mark infringement is actually claimed (Supreme Court, October 14th, 2020, appeal No. 18–21.419).

With regards to European trade marks, Paris is the competent European Union trade mark Court.

In this respect, the Court of Justice of the European Union (CJEU) recently ruled that the owner of a European Union trade mark whose rights have been infringed by a third party using an identical sign in advertising and offers for sale, displayed electronically, may bring infringement actions before the European Union trade mark Court(s) of the Member State(s) of the consumers or traders targeted by such advertising or offers for sale, regardless of the fact that the infringer took the decision to display them in another Member State (ECJ, September 5th, 2019, C-172-18).

1.2 What is the relevant trade mark legislation in your jurisdiction?

The applicable legislation regarding trade marks can be primarily found in the First Title of the Seventh Book of the Intellectual Property Code (IPC), as revised by Ordinance No. 2019-1169 of November 13th, 2019 and Decree No. 2019-1316 of December 9th, 2019.

Other important sources of trade mark legislation can be found in the Civil Code, the Commerce Code, the Civil Procedure Code, the Penal Code and in EU directives and regulations.

Sources of EU trade mark law notably stem from EU Regulations Nos 2017/1001, 2015/2424, 204/2009 and 2868/95, as well as from the Directive 2015/2436.

2 Application for a Trade Mark

2.1 What can be registered as a trade mark?

The Ordinance No. 2019-1169 of November 13th, 2019, implementing the Directive 2015/2436, recently waived the requirement of graphical representation to be registered as a trade mark. A sign only needs to be capable of being represented in the national trade mark register (Article L. 711-1 of the IPC).

Article R. 711-1 of the IPC specifies that the trade mark is represented in the national trade mark register in an appropriate form using commonly available technology, in a clear, precise, distinct, easily accessible, intelligible, durable and objective manner.

Therefore, signs such as sound, multimedia, motion and pattern can be registered as trade marks.

However, taste and smell signs cannot yet be registered as trade marks due to the absence of a relevant medium of representation.

2.2 What cannot be registered as a trade mark?

Pursuant to Articles L. 711-2 and L. 711-3 of the IPC, a sign cannot be registered as a trade mark if:

• it lacks distinctiveness, i.e. it is not arbitrary enough regarding the goods and services designated;
• it is composed exclusively of elements or indications which designate a characteristic of the goods or services and, in particular, the kind, quality, quantity, intended purpose, value, geographical origin, or time of production of the good or provision of the service;
• it is composed exclusively of elements or indications that have become customary in the current language or in trade practices;
• it is constituted exclusively by the shape or another char-acteristic of the good imposed by its nature, necessary to obtain a technical result or conferring to the good a substantial value;
• it is excluded by Article 6 ter of the Paris Convention;

it is contrary to public policy or its use is prohibited by law. Recently, the CJEU held that the sign "Fack Ju Göhte" designating recorded media in Class 9 and film entertainment in Class 41 was not contrary to accepted principles of morality, by emphasising that the fundamental moral values and standards to which a society adheres to is likely to change over time and vary in space (CJEU, February 27th, 2020, C-240/18P);

• it is misleading, particularly as regards to the nature, quality or geographical origin of the goods or services;
• it consists of a prior plant variety's denomination;
• its application has been filed in bad faith; and/or
• it infringes prior rights, in particular, an earlier regis-tered trade mark, a registered trade mark or a trade mark application with repute, a well-known trade mark, a trade name, a company name, a signboard, a domain name, a geographical indication, copyright, rights deriving from a protected design, personality rights, the name/image/ repute of a local authority or a public intercommunal cooperation institution, and a public entity's name.

2.3 What information is needed to register a trade mark?

Pursuant to Article R. 712-3 of the IPC, the application for registration shall, in particular, include the following information and documents:

• identification of the applicant:
• if the applicant is a natural person, mandatory information includes the title, last name, first name and full address; or
• if the applicant is a legal person, mandatory information includes the company name, its legal form and address;
• a representation of the trade mark;
• the specification of goods and services, and their corre-sponding classes;
• if a priority right is claimed;
• information about the representative if applicable (lawyer or trade mark attorney, for example) and Power of Attorney when required;
• proof of payment of fees;
• evidence of use if the sign's distinctiveness has been acquired through use;
• if a Collective mark of certification is concerned, the regu-lation defining the conditions to which the use of the trade mark is subject; and
• if the applicant is a foreigner who is not domiciled in France, evidence that the trade mark application has been filed in the domicile country and that the said country protects French trade marks.

2.4 What is the general procedure for trade mark registration?

The applicant must file an online registration form including the above details (see question 2.3).

The INPI shall then review the application and, provided that the trade mark application complies with the formal requirements and absolute grounds for refusal, the application shall be published within six weeks following the filing. In case of non-compliance, the INPI will notify to the applicant the objections raised and grant a delay either to amend the application filed or reply to the INPI's observations.

Within two months following the publication of the application, any third party can file opposition or make observations:

• opposition to the application is filed by any party mentioned in Article L. 712-4 of the IPC (see question 5.2); and
• observations on the validity of the application can be filed by any concerned third party.

Unless opposition is filed, the INPI shall allow the registration of the trade mark within six months following the application, publish the registration and issue the corresponding Certificate of Registration.

2.5 How is a trade mark adequately represented?

Various requirements need to be fulfilled depending on the type of trade mark:

• Word trade mark: representation usually causes no difficulty. When the term is in a foreign language, its translation shall be mentioned.
• Figurative or semi-figurative trade mark: a file containing an image or picture of the trade mark must be attached to the application, it being specified that definition of this image must be sufficient:
• Mark consisting in a shade or combination of colours: the colour must be described, for instance by the Pantone colour code or its exact composition.
• Holograms: application must contain one or several images or pictures of the holographic element(s), excluding the hologram itself.
• Three-dimensional trade mark: must be represented by a photograph or a design of the product. The distinctive character of three-dimensional trade marks can be discussed as consumers may not automatically identify a shape or a packaging as an indication of the origin of goods or services. For example, the CJEU confirmed the distinctive character of the shape of a stove highlighting that it differed from other stoves and specifying that the affixing of a word did not alter its distinctive character (CJEU, January 23rd, 2019, C-698/17). On the contrary, the Paris Court of Appeal held that the Hermes lock was not distinctive and thus could not be registered as a three-dimensional trade mark (Paris Court of Appeal, December 18th, 2018, No. 18/03823).
• Audible trade mark: must be represented by means of a musical stave.
• Sound trade mark: must be represented by MP3.
• Multimedia trade mark: must be represented by MP4.
• Motion trade mark: must be represented by MP4.

2.6 How are goods and services described?

In compliance with the trade mark principle of speciality, the application must precisely list the goods and services designated.

Under French trade mark law, goods and services are classified according to the Nice Classification system. This classification is divided into 45 classes: Classes 1 to 34 for goods; and classes 35 to 45 for services.

The sole mention of the class heading is, however, insufficient; the applicant must precisely mention each good or service for which trade mark protection is claimed (Paris Court of First Instance, December 13th, 2018, No. 17/05180). However, the CJEU recently held that a lack of precision in a trade mark specification is not a ground of invalidity in relation to a European trade mark or national trade mark (CJEU, January 29th, 2020, C-371/18).

Online tools for the drafting of the goods and services are available, notably, on the INPI and European Union Intellectual Property Office (EUIPO) websites.

2.7 To the extent 'exotic' or unusual trade marks can be filed in your jurisdiction, are there any special measures required to file them with the relevant trade mark authority?

Under French law, specific diligences to file the following trade marks may be required:

• if the word mark is in a foreign language, a translation shall be joined to the application;
• a figurative or three-dimensional trade mark application shall be accompanied by a description and picture of the trade mark;
• a sound trade mark shall be represented by way of MP3;
• a multimedia trade mark shall be represented by way of MP4; and
• a motion trade mark shall be represented by way of MP4. On January 17th, 2020, the INPI published in the Official Bulletin of Industrial Property (BOPI) the very first French MP3 trade mark application (not yet registered).

2.8 Is proof of use required for trade mark registrations and/or renewal purposes?

When filing or renewing a trade mark, the applicant does not need to establish any use of the sign.

However, pursuant to Article L. 714-5 of the IPC, any trade mark owner who has not put the registered trade mark into genuine use for a five-year period following the registration, without a proper reason, is exposed to revocation. The CJEU recently clarified the notion of genuine use and ruled that the use of a trade mark to guarantee the geographical origin and the characteristics of the goods attributable to such origin does not amount to a genuine use of a trade mark whose essential function is to identify the undertaking responsible for the goods at stake (CJEU, October 17th, 2019, C-514/18 P).

On its side, the Paris Court of Appeal clarified the notion of proper reasons for non-use. This notion is strictly defined as an obstacle to the exploitation of the mark that must have a direct relationship with the mark, make the use of the mark impossible or unreasonable and be independent of the will of the holder. In application of this definition, the Court held that unfair competition proceedings brought against the trade name and the signboard of a company does not qualify as a proper reason for non-use of the equivalent trade mark (Paris Court of Appeal, May 17th, 2019, No. 18/06796).

2.9 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

The registration of a French trade mark covers the French territory (continental France, overseas departments and New Caledonia) and, if expressly mentioned in the application form, French Polynesia. The latter option requires the payment of an additional fee.

2.10 Who can own a trade mark in your jurisdiction?

A trade mark can be filed by any natural person or a legal person such as a civil or commercial company, an association, the government (represented by one of its Ministries) or a territorial collectivity.

The applicant must be domiciled or established in France, in a European Union Member State, or in a European Economic Area Member State. He can also be a citizen of a Paris Union Member State, a World Trade Organization Member State or a country related to France through a bilateral convention.

A trade mark can be held by one natural or legal person or, conversely, on a co-ownership basis.

2.11 Can a trade mark acquire distinctive character through use?

According to Article L. 711-2 of the IPC, lack of distinctiveness of a sign can be rectified through use (except in cases where the sign is exclusively constituted by the shape imposed by the nature or functions of the product, is contrary to public policy, is misleading, is infringing a prior plant variety or has been registered in bad faith).

Distinctiveness can be acquired before and/or after the trade mark's registration.

To acquire distinctiveness, the trade mark must have been used as a trade mark and as registered. According to case law, to demonstrate acquired distinctiveness, the trade mark owner shall prove its long, notable, and renowned use.

In this regard, judges will notably take into account the duration and the geographic scope of the use, the importance of the use (sales figures, newsletters), the market shares held by the trade marks, press coverage, the importance of investments engaged by the owner for the promotion of the brand, and surveys establishing the percentage of consumers that, thanks to the trade mark, identify the goods and services as originating from the company at stake or the well-known character of the sign.

In this respect, the (CJEU) has stated in a recent decision that acquired distinctiveness must be established for each Member State; it is specified, however, that the evidence provided may be limited to certain Member States as soon as the said elements appear relevant to a wider area and that, taken together, they cover the entire European territory (CJEU, July 25th, 2018, C 84/17).

2.12 How long on average does registration take?

Provided that the INPI does not raise any observations and that no opposition proceedings are initiated or observations filed by third parties, the registration procedure usually takes six months.

2.13 What is the average cost of obtaining a trade mark in your jurisdiction?

The cost of a trade mark registration varies depending on the number of classes of goods or services designated.

The fees for the filing of a French trade mark before the INPI currently amount to 190 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.

Renewal fees amount to 290 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.

2.14 Is there more than one route to obtaining a registration in your jurisdiction?

Registration can either be obtained before the INPI for French trade marks, at the European Union Intellectual Property Office (EUIPO) for European Union trade marks, and/or at the World Intellectual Property Organization (WIPO) for international trade marks, which may designate France or the European Union.

2.15 Is a Power of Attorney needed?

A trade mark application can be filed by the applicant itself or through a representative.

Pursuant to Article R. 712-2 of the IPC, a representative is mandatory in two situations:

• the applicant is not domiciled or established in France, in a European Union Member State or in a European Economic Area Member State; or
• the application is filed by several applicants.

Unless the representative is an Attorney-at-Law or a French Industrial Property Counsel, a Power of Attorney will be required.

If the Power of Attorney is drafted in a foreign language, a translation into French will be required.

2.16 If so, does a Power of Attorney require notarisation and/or legalisation?

Under French law, a Power of Attorney does not require notarisation and/or legalisation.

2.17 How is priority claimed?

Priority must be claimed at the filing of the French trade mark application and within six months from the filing of the first application on which priority is based. A copy of the prior trade mark application must be submitted by the applicant within three months from the filing of the French trade mark application.

2.18 Does your jurisdiction recognise Collective or Certification marks?

The IPC recognises both Collective and Certification marks (now named Guarantee marks).

Pursuant to Article L. 715-6 of the IPC, a Collective mark is a trade mark which may be used by any person who complies with regulations for use issued by the owner of the registration.

Following the entry into force of the Ordinance of November 13th, 2019, pursuant to Article L. 715-1 of the IPC, a Guarantee trade mark distinguishes goods or services for which the material, manufacturing or delivery process, quality or other characteristics are guaranteed by regulations for use.

3 Absolute Grounds for Refusal

3.1 What are the absolute grounds for refusal of registration?

According to Article L. 712-7 of the IPC, a trade mark cannot be registered if:

• the application lacks the representation of the trade mark, the specification of the designated goods or services, the applicant's identity or the proof of payment of fee;
• the sign is exclusively constituted by the shape or another characteristic of the goods imposed by its nature, necessary to obtain a technical result or conferring to the good a substantial value;
• the sign is excluded by Article 6 ter of the Paris Convention;
• the sign is contrary to public policy or its use is prohibited by law;
• the sign is misleading, particularly with regards to the nature, quality or geographical origin of the goods or services;
• the sign consists of a prior plant variety's denomination;
• the sign lacks distinctiveness; or
• the INPI welcomes an opposition duly filed.

3.2 What are the ways to overcome an absolute grounds objection?

In the event that the INPI finds that the application does not comply with the requirements of Articles L. 711-1 to L. 711-3 of the IPC, it will notify the applicant and grant an extension of time in which to either reply or amend the application.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

If the application is rejected, the INPI decision can be challenged before the competent Court of Appeal within one month from its notification (Articles R. 411-19 and R. 411-20 of the IPC). Such delay is extended by one month for residents of the French overseas territories and two months for foreigners.

3.4 What is the route of appeal?

An appeal against a decision of the INPI's Director General can be filed before the competent Court of Appeal of the appellant's residence. The competent Courts specialised in trade mark law are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles.

An ultimate recourse against the Court of Appeal's decision can be filed before the French Supreme Court (Cour de cassation).

4 Relative Grounds for Refusal

4.1 What are the relative grounds for refusal of registration?

According to Articles L. 711-3 and L. 711-4 of the IPC, a sign cannot be registered as a trade mark if it infringes earlier rights, especially:

• a trade mark application (provided it is further registered) or registration;
• a registered trade mark or a trade mark application (provided it is further registered) with repute, whether or not the goods or services are identical or similar. In this respect, it should be pointed out that, as for European Union trade marks, the reputation must be established in a substantial part of the European Union and not only the relevant public in France (French Supreme Court, June 5th, 2019, No. 17-25.665);
• a well-known trade mark within the meaning of Article 6 bis of the Paris Convention;
• a company name, where there is a risk of confusion in the public mind;
• a trade name or signboard known throughout the national territory, where there is a risk of confusion in the public mind;
• a protected appellation of origin;
• author's rights;
• rights deriving from a model or a design;
• personality rights of a legal person, particularly his surname, pseudonym or likeness;
• a territorial collectivity's name, image or repute; and
• a public entity's name.

4.2 Are there ways to overcome a relative grounds objection?

The applicant can either:

• argue that there is no risk of confusion between the trade mark applied for and the earlier sign;
• bring invalidity proceedings against the owner of the prior trade mark;
• bring revocation for non-use proceedings against the owner of the prior trade mark;
• limit the application to some goods and services; or
• negotiate a co-existence agreement with the owner of the prior right.

4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

Should the INPI hold that the application does not comply with Article L. 711-4 of the IPC or that the opposition is well founded and reject the application, the applicant will be allowed to appeal the decision before the competent Court of Appeal within one month from its notification. Such delay is extended by one month for residents of the French overseas territories and two months for foreigners.

4.4 What is the route of appeal?

An appeal against a decision of the INPI's Director General can be filed before the competent Court of Appeal of the appellant's residence. The competent Courts specialised in trade mark law are the following: Aix-en-Provence; Bordeaux; Colmar; Douai; Fort-de-France; Lyon; Nancy; Paris; Rennes; and Versailles.

An ultimate recourse against the Court of Appeal's decision can be filed before the French Supreme Court.

5 Opposition

5.1 On what grounds can a trade mark be opposed?

One of the major changes resulting from the Ordinance No. 2019-1169 of November 13th, 2019 concerns the reform of the opposition procedure before the INPI against a trade mark application infringing the prior rights of a third party.

The new opposition procedure applies exclusively to trade marks filed on or after December 10th, 2019. Since that date, an opponent can claim several rights in a single opposition.

As a result, according to Article L. 712-4 of the IPC, third parties can file opposition against a trade mark application on the grounds of:

• an earlier trade mark application or registration (provided it is further registered);
• an earlier trade mark or a trade mark application (provided it is further registered) with a repute, whether or not the goods or services are identical or similar;
• an earlier well-known mark within the meaning of Article 6 of the Paris Convention;
• a company name or corporate name;
• a domain name;
• a trade name or a signboard whose scope is not only local;
• a registered geographical indication or an application for a geographical indication, which includes appellations of origin;
• a right over the name, image or repute of a local territorial authority or a public intercommunal cooperation institution; or
• a right over a public entity's name.

5.2 Who can oppose the registration of a trade mark in your jurisdiction?

Pursuant to Article L. 712-4-1 of the IPC, opposition to an application for registration may be entered by:

• the owner of a prior trade mark application or registration (French trade mark, EU trade mark or international trade mark designating the French territory of the EU);
• the owner of an earlier well-known trade mark;
• the beneficiary of an earlier exclusive right of exploitation (i.e. an exclusive licensee), unless otherwise stipulated in the contract;
• the holder of a company name or corporate name;
• the holder of a trade name or signboard;
• the holder of a domain name;
• any person who is entitled to protect a geographical indication;
• a territorial collectivity or a public intercommunal cooper-ation institution; and
• the owner of a trade mark where the trade mark has been filed in the agent's name without authorisation.

5.3 What is the procedure for opposition?

All oppositions shall be filed online on the INPI's website. They can be filed before the INPI within two months from the publication of the trade mark application.

The opposition shall notably specify (Article R. 712-14 of the IPC):

• the identity of the opponent;
• the nature, origin and scope of the prior rights claimed;
• the references of the application against which the opposi-tion is filed and the list of the goods and services;
• the statement of the grounds of the opposition, establishing notably the likelihood of confusion between the signs. In this respect, it can be underlined that the likelihood of confusion must be globally assessed taking into account all relevant factors, including the distinctiveness, the well-known character or the degree of recognition of the earlier trade mark as repeatedly reinstated by the French Supreme Court (French Supreme Court, January 31st, 2018, No. 16-10761; May 30th, 2018, No. 16-22993, 16-22994, 16-22995 and 16-22996; June 27th, 2018, No. 16-25921);
• proof of payment of fees; and
• Power of Attorney, if required.

The opposition is notified to the applicant, who is granted a two-month delay to submit counter-observations including proof of use of the earlier trade mark. Failing to do so enables the INPI to make a decision on the matter. In case of a response by the applicant, the opposition proceedings become a contradictory procedure. The applicant and the opponent can exchange observations for a six-month period as from the notification of the opposition. Upon these observations, the INPI will issue its decision within three months (Article R. 712-16-1 of the IPC).

Pursuant to Article L. 712-5 of the IPC, the opposition is rejected if the director of the INPI has not issued its decision within three months as from the end of the parties' observations.

The fee for filing an opposition before the INPI is 400 euros for one prior right and 150 euros for each additional prior right.

6 Registration

6.1 What happens when a trade mark is granted registration?

Once registration is granted, the INPI publishes the trade mark registration in the Official Bulletin of Industrial Property (BOPI) and sends the Certificate of Registration to the trade mark owner or its representative.

6.2 From which date following application do an applicant's trade mark rights commence?

Pursuant to Article L. 712-1 of the IPC, trade mark rights commence at the filing date of the application.

Trade mark rights are enforceable against third parties after the publication of the application or the notification to third parties. Prior to the trade mark registration, the applicant can indeed:

• file opposition proceedings against another trade mark application; or
• initiate infringement proceedings, it being specified that the Court will stay the proceedings until registration.

6.3 What is the term of a trade mark?

Trade mark protection starts from the date of filing of the trade mark application and lasts for 10 years, renewable indefinitely (Article L. 712-1 of the IPC).

6.4 How is a trade mark renewed?

Pursuant to Articles L. 712-9 and R. 712-24 of the IPC, a trade mark is indefinitely renewable for additional terms of 10 years.

The declaration must be filed within one year before the term of the trade mark. In case of failure to renew the trade mark within such time, the owner can benefit from a six-month grace period and still renew the trade mark, for a supplementary fee of 125 euros.

Renewal fees amount to 290 euros for one class, plus 40 euros for each additional class and 60 euros if the French Polynesia option has been chosen.

Failure to pay such fees is sanctioned by the lapse of the trade mark right.

7 Registrable Transactions

7.1 Can an individual register the assignment of a trade mark?

The assignment of a trade mark is enforceable against third parties if registered with the National Register of Marks. The assignment can be registered by any party by filing a specific form before the INPI together with a copy of the assignment, the relevant clauses or a confirmatory assignment signed by both parties. If the assignment has been drafted in a foreign language, a French translation must be provided.

7.2 Are there different types of assignment?

A trade mark assignment may either concern the entire trade mark (or trade mark application) or be limited to specific goods or services (Article L. 714-1 of the IPC). However, it cannot be limited to a part of the French territory or to a part of the sign itself.

7.3 Can an individual register the licensing of a trade mark?

As for the trade mark assignment, in principle, a licence agreement is only enforceable against third parties if registered with the National Register of Marks. The licence can be registered by any party by filing a specific form before the INPI together with a copy of the licence agreement, the relevant clauses or a confirmatory licence signed by both parties. If the licence has been drafted in a foreign language, a French translation must be provided.

7.4 Are there different types of licence?

As for the assignment of a trade mark, the licence may either concern the entire trade mark (or trade mark application) or be limited to particular goods or services (Article L. 714-1 of the IPC). In contrast to assignment agreements; however, the licence may be limited to a part of the French territory or to a part of the sign itself.

The licence may either be sole, exclusive or non-exclusive. In case of a non-exclusive licence, several licensees may have the same rights under the same trade mark.

7.5 Can a trade mark licensee sue for infringement?

Pursuant to Article L. 716-4-2 of the IPC, except as otherwise stipulated in the licensing contract, any licensee is entitled to bring an action for infringement provided the trade mark owner gave his consent. However, the exclusive licensee is entitled to bring an action for infringement if, after notice, the owner of the trade mark does not bring the proceedings itself within a reasonable time frame.

Any licensee can intervene to join the infringement proceedings in order to obtain compensation of the prejudice suffered.

7.6 Are quality control clauses necessary in a licence?

Quality control clauses are not mandatory under French trade mark law, although it is advisable for the trade mark owner to include such provisions in their licence. Such control clauses can include, for example, the prior approval of any prototype, a random check of the quality of the samples or the carrying out of audit procedures, and that non-compliance with these obligations shall be sanctioned by the termination of the licence.

7.7 Can an individual register a security interest under a trade mark?

A security interest is only enforceable against third parties if registered with the National Register of Marks. The security can be registered by any party by filing a specific form, together with a copy of the agreement, a copy of the licence agreement, the relevant clauses or a confirmatory agreement signed by both parties. If the agreement is written in a foreign language, a translation into French must be provided.

7.8 Are there different types of security interest?

Among the different types of security interest existing under French law, pledging (nantissement) can be granted over intangible property such as a trade mark.

As for the assignment or the licensing of a trade mark, a pledge must be registered with the National Register of Marks by filing a specific form with the INPI, together with a copy of the contract signed by both parties. If this agreement has been drafted in a foreign language, a French translation must be provided.

8 Revocation

8.1 What are the grounds for revocation of a trade mark?

Pursuant to Articles L. 714-5 and L. 714-6 of the IPC, a trade mark can be revoked:

• if, during an uninterrupted period of five years, its owner has not put the trade mark to genuine use in connection with the goods or services designated in the registration; or
• if, due to the owner, the trade mark has become the common name in trade for a good or service or has become liable to mislead, particularly regarding the nature, quality or geographical origin of the product or services.

8.2 What is the procedure for revocation of a trade mark?

Since April 1st, 2020, the INPI has, in principle, sole jurisdiction under the new Article L. 716-5 I of the ICP, to rule on principal claims for trade mark revocation (based on non-use or degeneration) and/or trade mark invalidity (see question 9.2 for more detail on the grounds of invalidity).

Exceptionally, civil Courts retain exclusive jurisdiction under Article L. 716-5 II of the ICP to rule on the following matters:

• Other civil actions and trade mark claims (other than those listed in L. 716-5 I of the ICP), including when they relate to issues of unfair competition.
• Revocation and invalidity claims filed as principal or coun-terclaims in connection with any other claim within the jurisdiction of the Court, in particular in the context of an action brought on the basis of Articles L. 716-4 (infringement action), L. 716-4-6 (preliminary injunction action), L. 716-4-7 (evidentiary measures, notably seizures) and L. 716-4-9 (evidentiary measures) or in the context of an action for unfair competition.
• Revocation and invalidity claims filed while either eviden-tiary, provisional or protective measures ordered in order to stop trade mark infringement are in the course of execution before the commencement of proceedings on the merits. Importantly, where a claim is filed in violation of the aforementioned Article, the Court or INPI lacking jurisdiction shall declare it inadmissible ex officio (Article R. 716-5 of the IPC).

On July 10th, 2020, the INPI declared that it lacked jurisdiction to hear a revocation claim because the trade mark had previously been the object of infringement proceedings before the Marseille Court of First Instance (INPI, decision July 10th, 2020, DC20-0008/3319571/SGU).

8.3 Who can commence revocation proceedings?

Revocation may be requested by any third party.

Revocation may also be requested by way of a counterclaim in an infringement action.

8.4 What grounds of defence can be raised to a revocation action?

In case of a revocation action for non-use, the onus of proof lies upon the owner of the trade mark. He/she can overcome such action by:

• providing evidence of genuine use of the trade mark during the relevant period. In a recent decision, the Paris Court of Appeal ruled that genuine use of a trade mark shall be established for every good for which revocation is sought and not merely for parts of the goods which remain invisible for consumers (Paris Court of Appeal, June 11th, 2019, No. 17/04525). Trade mark use can be proved by any means but evidence usually consists of the number of sales, advertisements, catalogues and press articles; and
• establishing that the trade mark has not been put into use for good reason, i.e. an impediment of fact or of law. This obstacle must be independent of the will of the trade mark owner, making the use of the trade mark impossible or unreasonable.

If the trade mark has become a common name in trade or liable to mislead, the owner of the trade mark can establish that he/she has objected to such use. Objections of the owner can notably result in cease-and-desist letters or writs of summons filed against third parties using the trade mark in an inappropriate manner.

The Supreme Court recently held that the owner of a trade mark revoked for non-use retains the right to claim compensation for damages suffered as a result of the use by a third party, prior to the effective date of revocation, of a similar sign for identical or similar goods/services which are confusing with this trade mark (French Supreme Court, November 4th, 2020, appeal No. 16-28.281).

8.5 What is the route of appeal from a decision of revocation?

The INPI Director's decision may be appealed before the competent Court of Appeal. In the event of a revocation counterclaim brought in an infringement action, the first instance decision must be appealed before the Court of Appeal competent for the entire case.

An ultimate recourse against an appeal decision can be filed before the French Supreme Court only on questions of law.

9 Invalidity

9.1 What are the grounds for invalidity of a trade mark?

The grounds for invalidity of a trade mark are identical to the grounds for refusal of registration (whether relative or absolute grounds).

9.2 What is the procedure for invalidation of a trade mark?

As indicated above (see question 8.2), the INPI has concurrent jurisdiction under the new Article L. 716-5 of the ICP to rule on principal claims for trade mark invalidity. More precisely, only claims based on the following grounds shall be initiated before the INPI:

• Absolute grounds: lack of distinctive character, descriptive character, customary signs, deceiving signs, legally prohibited use, filing in bad faith, etc.
• Certain relative grounds: earlier trade mark, company name, trade name, domain name, geographical indication, territorial collectivity, name, image and public entity's name. The INPI recently held that the sign "GANG BANG A PARIS" designating Classes 25, 35 and 41 would infringe public policy or morality, particularly considering that the sign was partly composed of a term, which promoted a message of violent or pornographic nature, was prohibited by law (INPI, decision November 10th, 2020, NL 20-0024).

However, invalidity claims based on personality rights, author's rights and designs shall be initiated before the civil Court (see question 8.2 for exclusive jurisdiction of the Court).

Pursuant to Article L. 716-2-6 of the IPC, as a principle, an invalidity claim cannot be time-barred.

As an exception, the action shall be barred if the owner of a prior right has knowingly acquiesced (i.e. has not opposed) to the use of the later registered trade mark for at least a period of five years, unless the later trade mark has been filed in bad faith (Article L. 716-2-8 of the IPC). Moreover, the action of the holder of a well-known trade mark shall be barred after five years from the registration unless the trade mark has been filed in bad faith (Article L. 716-2-7 of the IPC).

9.3 Who can commence invalidation proceedings?

If the validity of the trade mark is challenged before the INPI, the proceedings may be commenced by any legal or natural person. Before the French Court, the proceedings shall be commenced by any concerned third party.

If the validity of the trade mark is challenged on relative grounds before the French Court, only the prior right-holder can introduce the action.

9.4 What grounds of defence can be raised to an invalidation action?

If the validity of the trade mark is challenged on absolute grounds, the trade mark owner can argue that the opponent failed to demonstrate that the trade mark is invalid. To that end, the trade mark owner can either:

• provide evidence of the distinctive nature of the trade mark; or
• prove that the trade mark is neither deceptive nor contrary to public policy.

If the validity of the trade mark is challenged on relative grounds, the owner of the later trade mark can argue that either:

• there is no likelihood of confusion between the signs;
• the prior trade mark is invalid; or
• the owner of the prior trade mark has acquiesced to the use of the later trade mark filed in good faith (Article L. 714-3 of the IPC).

9.5 What is the route of appeal from a decision of invalidity?

The decision on the invalidity of a trade mark can be appealed before the competent Court of Appeal and an ultimate recourse can be filed before the French Supreme Court.

10 Trade Mark Enforcement

10.1 How and before what tribunals can a trade mark be enforced against an infringer?

Pursuant to Article L. 716-5 of the IPC, infringement proceedings may be commenced by the owner of the prior trade mark or its exclusive licensee.

If the exclusive licensee wishes to commence the proceedings itself, he/she can only do so if:

• the licence agreement, which should have been registered with the National Register of Marks, does not prohibit the exclusive licensee to initiate action; and
• the owner of the trade mark does not bring the proceedings itself after having being notified of the infringing acts.

As regards European trade marks, it should be noted, however, that the publication requirement has been abandoned by the CJEU, which held that the exclusive licensee may initiate infringement proceedings even in the absence of publication of the licence agreement.

In addition, the non-exclusive licensee can intervene in the proceedings to seek reparation of its own prejudice.

The claimant initiates proceedings by filing a writ of summons with the competent Court of First Instance from the following list of Courts: Bordeaux; Lille; Lyon; Marseille; Nanterre; Nancy; Paris; Rennes; Strasbourg; and Fort-de-France.

10.2 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

Before initiating a trial on the merits, the owner of the trade mark (or the exclusive licensee) should gather evidence of the infringing acts.

To that end, it may organise a seizure. As a matter of fact, pursuant to Article L. 716-7 of the IPC, the trade mark owners/ holders may request ex parte from the President of the competent Court of First Instance the authorisation to have a bailiff, possibly accompanied by the relevant expert(s) and/or police officer(s), enter the premises of the alleged infringer or third party. The bailiff will then gather evidence of the infringement and, notably, seize or describe the infringing products. He/ she may also process, collect and copy any relevant documents demonstrating the infringement and the extent of the prejudice suffered. Such measures for preserving evidence requested ex parte are strictly governed by the order issued by the judge. For example, the report of a seizure during which the bailiff's findings were extended to all the plaintiff's marks, while the order only concerned two trade marks precisely identified, is invalid (French Supreme Court, July 3rd, 2019, No. 16-28.543). The owner of the trade mark (or the exclusive licensee) may also gather evidence by means of:

• a bailiff's report. The bailiff takes note of the offer for sale of the litigious products by the infringer and the purchase by an independent third party. Absent of an independent third party, the fairness and objectivity of a bailiff's report can be challenged. As a matter of fact, the Paris Court of Appeal reinstated that the purchase of a product by an intern of the claimant's law firm was contrary to Article 6 of the European Convention on Human Rights. As a result, the Court cancelled the bailiff's report (Paris Court of Appeal, October 18th, 2019, No. 2018/08962);
• the report of an expert either appointed by the judge or amicably requested by a party;
• an investigator's report, a survey or a witness statement; or
• a customs withholding (see question 14.1).

Once evidence of the infringement has been gathered, the owner of the trade mark (or the exclusive licensee) shall send the infringer a formal notice (cease-and-desist letter) requesting that the infringer cease the infringing acts.

In this respect, it should be noted that, pursuant to Article 54 of the Civil Procedure Code (CPC), and unless otherwise justified by the urgency of the issue at stake, the claimant must specify in the writ of summons the actions undertaken to amicably resolve the dispute. In the absence of any attempt to reach an amicable solution, the judge may suggest the initiation of conciliation or a mediation procedure between the parties.

If amicable resolution attempts have failed, the claimant can officially commence the proceedings by filing a writ of summons before the competent Court (see question 10.1). Pursuant to Articles 54 and 56 of the CPC, the writ of summons shall indicate the Court seized, the subject matter of the litigation, the claimant's identity, the place, date and time of the hearings, the relevant facts and legal claims and the list of exhibits.

Once the proceedings have been initiated, a first procedural hearing takes place during which the pre-trial judge checks whether:

• the defendant has appointed a lawyer; and
• the claimant has provided the defendant's attorney with his/ her exhibits (usually eight weeks after the first procedural hearing).

A second procedural hearing is set for the filing of the claim-ant's submissions in defence and exhibits (usually six to eight weeks from filing the writ with the Court).

A third procedural hearing is set for the filing of the defendant's submissions in defence and exhibits in reply (approximately six to eight weeks after the second procedural hearing).

The judge can schedule additional hearings to allow the parties to file supplementary submissions or close the debates and set a date for the final hearing (approximately six to eight weeks after the third procedural hearing).

A final hearing is held for pleadings, the Court's decision usually being issued between one and three months after the oral debates.

First instance proceedings on the merits, before civil Courts, usually last between 18 and 20 months. Appeal proceedings on the merits last approximately 20 months.

Trade mark owners can also opt for accelerated proceedings: accelerated proceedings on the merits at first instance usually last three to six months, whereas accelerated proceedings on the merits at the appeal stage usually last six to eight months.

10.3 Are (i) preliminary, and (ii) final injunctions available and if so on what basis in each case?

Preliminary injunctions are available under French law.

Pursuant to Article L. 716-6 of the IPC, any person entitled to sue for infringement may request any measure from the Courts in order to stop the infringement or to prevent an imminent infringement.

Those measures canbe taken eitherbefore or after the commencement of proceedings on the merits of the case.

If filed before, the action on the merits must be brought within 20 business days (or 31 calendar days if longer) from the date of the interim order (Article R. 716-20 of the IPC). Failing that, the measures granted will be automatically cancelled.

When circumstances require, such measures can be ordered ex parte, especially when any delay would cause irreparable harm to the right-holder.

French judges will:

• conduct a preliminary assessment of the trade mark's validity; and
• ascertain whether the alleged trade mark infringement has a sufficient degree of certainty.

However, judges must also consider the proportionality of the measures being sought, in accordance with the Directive 2004/38/EC.

A lower threshold than the action on the merits is applied so as to provide the right-holder with rapid and effective interim measures.

Interim remedies that can be granted in this respect include:

• interlocutory injunction to cease the allegedly infringing acts, eventually under a penalty;
• the lodging of a guarantee to ensure the right-holder's competition; and
• the seizure of the goods in question or their withdrawal from distribution channels.

Decisions on provisional measures may be appealed within 15 days, unless granted by the pre-trial judge.

Injunctions are also available as final remedies (see question 12.1).

10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

There is no discovery or disclosure procedure (requiring a party to disclose information or documents) available under civil procedure rules. However, judges are vested with investigation powers and can issue an injunction requesting the production of evidence in compliance with civil procedure rules (Articles 11 and 138 of the CPC).

In addition, pursuant to Article L. 716-7-1 of the IPC, the judge can, at the request of the claimant, order the production of the documents needed to ascertain the origin of the infringing products, the distribution channels and the amount of infringing material manufactured and/or commercialised, provided there is no legitimate obstacle. In this respect, it should be noted that trade secrets can qualify as a legitimate obstacle to the communication of documents and information. In fact, the Aix-en-Provence Court of Appeal recently rescinded an order allowing the seizure of documents revealing the name of the defendant's clients on the ground that the seizure of such information would infringe trade secrets and had no sufficient link with the alleged infringement (Aix-en-Provence Court of Appeal, April 26th, 2019, No. 19/00159).

Such measure can be requested by the claimant prior to the decision on the merits through an incidental procedure, or can be granted by the Court following the finding of the infringement. In such a case, the Court may grant a provision on the damages and request from the defendant the production of any relevant document for the evaluation of the prejudice.

10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

In civil procedure, submissions and/or evidence are presented to the Courts in writing. The content and strength of the evidence submitted are assessed by the Court, it being specified that:

• the parties can freely discuss the probative value of an exhibit or the conclusions drawn from the evidence; and
• the probative value can vary according to the type of evidence. For instance, the probative value of judicial expertise is stronger than amicable expertise.

French civil procedure does not provide any process for cross-examination of witnesses.

10.6 Can infringement proceedings be stayed pending resolution of validity in another Court or the Intellectual Property Office?

During infringement proceedings, the validity of the trade mark is often challenged as a counterclaim by the opponent. Such claim is therefore usually heard by the Court to which it is referred. As a consequence, staying the proceedings should not be necessary.

However, in case of a European Union trade mark and pursuant to Article 128 of EU Regulation 2017/1001 (former Article 100 of EU Regulation 207/2009, modified by EU Regulation 2015 2015/2424), if the validity of a European Union trade mark is first challenged before the European Office, the French Court will have to stay the proceedings pending the European Office's decision. The European Union trade mark Courts shall remain competent if the validity of the European Union trade mark is challenged as a counterclaim (Article 124 of EU Regulation 2017/1001).

10.7 After what period is a claim for trade mark infringement time-barred?

Pursuant to Article L. 716-5 of the IPC, infringement proceedings shall be barred after five years from the latest infringing act.

10.8 Are there criminal liabilities for trade mark infringement?

Pursuant to Article L. 716-9 of the IPC and Article 131-38 of the Penal Code, trade mark infringers may face criminal sanctions of up to four years of imprisonment and a fine of 400,000 euros, or a fine of 2,000,000 euros when the infringer is a legal person.

10.9 If so, who can pursue a criminal prosecution?

Criminal prosecution of infringement can either be pursued by the right-holder or directly by the Public Prosecutor. A complaint of the victim is indeed not mandatory in order to pursue the offence of counterfeiting.

10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?

French trade mark law does not provide any provision regarding unauthorised threats of trade mark infringement actions.

However, the sending of cease-and-desist letters in excessive terms to alleged infringers can amount to a fault. Likewise, warning letters sent to distributors or other intermediaries can trigger the trade mark owner's liability on the ground of disparagement or unfair competition based on Article 1240 of the Civil Code (French Supreme Court, January 9th, 2019, No. 17/18350).

11 Defences to Infringement

11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?

In case of infringement action, the defendant may claim that:

• the sign is not used as a trade mark;
• the sign is not used in the course of trade;
• the sign differs from the registered trade mark;
• the goods and services in relation to which the sign is used differ from those designated in the trade mark registration; and
• there is no likelihood of confusion for the relevant consumer.

11.2 What grounds of defence can be raised in addition to non-infringement?

In case of trade mark infringement action, available defences include:

• specific trade mark defences other than non-infringement, as follows:
• invalidity of the seizure;
• exhaustion of rights;
• lawful transit;
• the existence of a prior right (company name, business name, sign board);
• preclusion due to acquiescence to the infringing use;
• revocation for non-use of the trade mark;
• the trade mark having become generic or misleading;
• the use of the sign in question as a necessary reference or a geographical indication; and
• the use in good faith of its own