FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
5.5 Legal Remedies Against the Decision of the Trade Mark Office The FTO’s decision can be contested before the com - petent Court of Appeal within one month from the notification of the FTO’s decision. Once the formal appeal is filed, the appellant will have three months to file written observations in support of the appeal. 5.6 Amendment in Revocation/Cancellation Proceedings Revocation/cancellation proceedings can be filed against all or part of the trade mark registration. The scope of the action is determined by the initial claim and usually remains unchanged until the end of the proceedings (ie, the FTO’s or court’s decision). The scope of the action can, however, be amended in some circumstances. The most common scenario is when the owner of the trade mark subject to the action voluntarily surrenders part of its trade mark rights, for instance by withdrawing part of the goods/services covered by its registration that is subject to the action. This will automatically alter the scope of the revoca - tion/cancellation action. Moreover, during legal actions before the courts, the claimant to the revocation/cancellation action could also abandon part of its initial claim or even add a new/additional claim before the written part of the proceedings is closed, thereby altering the scope of the action. 5.7 Combining Revocation/Cancellation and Infringement French courts have exclusive jurisdiction to hear invalidation and revocation actions when brought in connection with any other claim, or in a counterclaim falling within the jurisdiction of the courts. In this case, all actions will be heard together. This jurisdiction is especially useful in the case of actions for infringement and unfair competition.
ten observations and any other relevant documents (including proof of the earlier rights claimed). Then, the “adversarial” phase begins: the applicant and the opponent will be able to submit written argu - ments and/or jointly request suspensions if they are discussing a possible settlement. The decision is issued within three months of the end of the adver- sarial procedure. If no decision is issued, the opposi - tion shall be deemed to have been rejected. Cancellation Procedure Cancellation actions filed before the FTO have to be substantiated at the moment of filing. The adversarial phase is, then, identical to the adversarial phase in opposition proceedings. Under Articles L.716-5 et seq of the French Intellectual Property Code, French courts have exclusive jurisdic - tion to hear invalidation and revocation actions when brought in connection with any other claim, or in a counterclaim falling within the jurisdiction of the courts (and in particular actions for infringement and unfair competition). French courts also have jurisdiction to hear invalida - tion actions primarily based on the existence of prior copyrights, design and model rights and/or personal - ity rights. Revocation Procedure Revocation actions for non-use are filed through an administrative form requesting the adverse party to submit evidence of genuine use. Once the owner of the contested trade mark has filed evidence and writ - ten submissions, the adversarial phase begins. Partial Cancellation or Revocation Partial revocation or invalidation is always possible, especially because the FTO and the courts assess their decisions with regard to each of the covered goods and services. For example, a trade mark may be genuinely used for part of the covered goods only and remain in force for those goods; a sign may be devoid of distinctive char - acter only for part of the covered goods and services.
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