FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
Revocation Revocation proceedings on the grounds of lack of genuine use can only be filed from five years after the registration date. Cancellation The French system provides a rule known as “forfei - ture by acquiescence”, according to which a third par - ty may not challenge a registered trade mark whose use has been knowingly tolerated by the third party for more than five years. There are no statutes of limitation for cancellation actions based on fraudulent filing/bad faith. 5.2 Legal Grounds for Filing an Opposition or Cancellation The legal grounds for filing an opposition to a trade mark application are listed in Articles L.712-4 and L.712-4-1 of the French Intellectual Property Code and are the following: • prior trade marks; • prior trade marks enjoying a reputation – registered or unregistered; • company name, trade name, commercial signs or domain names; • geographical indications; and • name, image or reputation of a local authority or a public establishment or public entity. Cancellation A trade mark may be revoked or cancelled on the basis of two sets of grounds: absolute grounds and relative grounds. The absolute grounds for invalidation are the follow - ing (Article L.711-2 of the French Intellectual Property Code): • the mark is devoid of distinctive character; • the mark consists exclusively of elements which may designate a characteristic of the covered goods and services; • the mark consists exclusively of the shape of the product dictated by its nature or technical function; • the mark is a national emblem; • the mark is contrary to public policy or morality;
• the mark deceives the public; • the mark is a protected appellation of origin, geo - graphical indication, or plant variety; and • the mark was filed in bad faith. The relative grounds for invalidation actions are based on prior rights (trade marks, well-known signs, copy - rights, corporate names, domain names, public enti - ty name, etc) and are listed in Article L.711-3 of the French Intellectual Property Code. 5.3 Ability to File an Opposition or Revocation/Cancellation Any natural or legal person that owns an opposable prior right, amongst those listed in 5.2 Legal Grounds for Filing an Opposition or Cancellation , can file an opposition or cancellation action based on prior rights. As detailed, the claimant does not necessarily need to own a registered trade mark since other valid prior rights can be invoked. The claimant will be invited to prove their rights pertaining to the invoked prior rights. Any natural or legal person can file a cancellation action based on absolute grounds of cancellation or revocation. Claimants do not necessarily need to be represented, for instance by an attorney, before the FTO. Opposition fees before the FTO are EUR400 if the opposition is based on just one prior right, and EUR150 per additional prior right invoked in the course of the opposition. Cancellation fees before the FTO are EUR600. The average attorney’s fees are very hard to determine since they vary from one profession to another and are not based on any objective harmonised schedule. 5.4 Opposition or Revocation/Cancellation Procedure In opposition proceedings, the opponent has a period of two months from the publication of the trade mark to file a formal opposition against the contested trade mark application. The opponent then has a period of one month, fol - lowing the opposition deadline, to submit their writ -
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