Opposition is a crucial procedure to ensure the protection of trademarks. It is a way to solve potential disputes quickly, simply and with reasonable costs and time limits.
Following the transposition of the « Trademark reform Package » in the French law system, modifications were made to the opposition procedure, ensuring to right holders a broader protection against infringing said rights.
The first major change is the expansion of prior rights that can serve as the basis to the opposition before the French office of industrial property. Article L712-4 of the French Intellectual Property Code now provides the possibility to oppose a trademark application on the basis of one or, if applicable, several of the following basis :
- a French trademark application (subject to its subsequent registration) or registered French trademark,
- international trademark registration with effects in France or in the European Union,
- European trademark registration (subject to its subsequent registration) or a registered European trademark,
- A well-known trademark,
- A trademark that enjoys repute in France or, in the case of a European trademark, a reputation in the European Union, subject to certain conditions,
- A company name or a corporate name if there is a risk of confusion in the mind of the public,
- A trade name, commercial sign or a domain name, as long as its scope is not only local if there is a risk of confusion in the mind of the public,
- an appellation of origin or a protected geographical indication,
- the name of a territorial collectivity or the name of a public establishment for inter-municipal cooperation,
- the name of a public entity if there is a risk of confusion in the mind of the public.
This new legal provision also opens the possibility for the opponent to invoke, if need be, several rights to form the opposition.
The second important transformation concerns the opposition process.
As in the former procedure, the opponent has a 2 months deadline from the date of publication of the trademark application to file for opposition. However, they now have an additional month to present their observation as well as the documents necessary to prove the existence and the scope of their rights. It will then be qualified, firstly, as a “formal” opposition, as in the procedure before the EUIPO, until the statement of case on the merits is filed, secondly, in the event that the Parties have not settled their dispute amicably in the meantime.
Then opens the contradictory phase of the opposition, during which the Parties exchange documents and their arguments in writing. On this occasion, they may request an oral hearing. Respecting the adversarial principle, no new pleas of new documents may be presented during the hearing.
Depending on the number of exchanges between the Parties, this first phase of instruction may last between 6 months and a year. At the end of this period, the director of the French office must render its decision within 3 months.
The changes made by the transposition of the European directive into the French law system provide greater protection to rights holders. This new procedure is more precise because it has been limited by the definition of short and non-extendable deadlines. Furthermore, it makes it possible to base the opposition on a larger number of prior rights, thus putting the protection of holders at the forefront of this procedure.
This new opposition system applies to all trademark application filed from December 11, 2019.
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