FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
Partial Cancellation or Revocation Partial revocation of invalidation is always pos - sible, 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 character only for part of the covered goods and services. 5.5 Legal Remedies Against the Decision of the Trade Mark Office The FTO’s decision can be contested before the competent 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 regis - tration. 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 with - drawing 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. 5.8 Measures to Address Fraud Procedures Before the FTO The FTO has exclusive jurisdiction to refuse, revoke or cancel marks that were filed fraudu - lently, based on Article L.711-2 of the French Intellectual Property Code as an absolute ground of refusal, as part of opposition or cancellation actions: • based on bad faith – according to the first decisions of the FTO on this ground, bad faith is assessed similarly to fraud, namely: (a) when it is demonstrated that the appli - cant/owner of the fraudulent mark has filed said mark with malicious intent, (ie, with the intent of unduly appropriating benefits attached to the plaintiff/plaintiff’s activities, with the intent of depriving the plaintiff of a sign necessary to its activity, with the intent of hindering the plaintiff by opposing the ownership of the mark that was filed fraudulently, etc); and (b) when it is demonstrated that the appli -
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