Focus on the reform of French trademark law following the transposition of the Trademark Package

Author:Mr Clement Monnet and Nilofar Moini Shabestari
Profession:Norton Rose Fulbright Australia

Order n°2019-1169 of 13 November 2019 on goods and services marks, its implementing decree n°2019-1316 of 9 December 2019 and the Minister of the Economy and Finance and the Minister of Public Accounts decision of the same date on procedural fees of the French national institute of industrial property (INPI, the acronym for the original French "Institut National de la propriété industrielle") significantly amend French trademark law by transposing into national law the provisions of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015, known as the "Trademark Package", the purpose of which is to harmonize and modernize trademark law within the European Union.

This modernization of French law awaited by trademark practitioners and owners will have important practical consequences in terms of trademark protection and defence strategy.

The new provisions are almost immediately applicable – since with the exception of the procedural changes that will come into force on 1st April 2020 – they entered into force on 11 December 2019 (i.e. the day after the publication of the implementing decree of 9 November 2019).

Below is an analysis of the key measures of this reform.

The door has been opened to the registration of new types of trademarks

Firstly, the definition of the trademark has been simplified. As from the effective date of the new rules, it is defined simply as "a sign used to distinguish the goods or services of a legal person". To be valid, the trademark will no longer have to "be capable of being represented graphically".

In practice, this change should make it possible to grant trademark rights to more "technical" signs, such as sounds or graphic animations. These new categories of trademarks must, however, be represented in the national trademark register in a "clear, precise, distinct, easily accessible, intelligible, durable and objective manner".

Although these new categories already exist at the European Union level, it will be interesting to see how the INPI will approach this significant issue in response to technological developments in marketing practices and to make French trademark law attractive.

Renewal of the opposition procedure

The opposition procedure before the INPI has been profoundly reshaped. As in the case of the opposition procedure before the European Union Intellectual Property Office (EUIPO), it will no longer be necessary to file the statement of grounds and supporting...

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