Industrial Property Law

The INPI director general rules on the merits of the opposition within a three-month period from the end of the examination phase (Article L. 712-5 and R. 712-16-2 IP Code), in the light of all the written and oral observations submitted by the parties. If the INPI does not respond within this time-limit, the opposition is deemed to be refused (Art. L. 712-5 IP Code).
If the opposition is based on …

Decision of Director General

The INPI director general rules on the merits of the opposition within a three-month period from the end of the examination phase (Article L. 712-5 and R. 712-16-2 IP Code), in the light of all the written and oral observations submitted by the parties. If the INPI does not respond within this time-limit, the opposition is deemed to be refused (Art. L. 712-5 IP Code).

If the opposition is based on an earlier mark, the INPI must assess whether the filing of the disputed mark constitutes a possible infringement of the earlier mark in light of the elements provided by the parties . The assessment of infringement requires establishing the likelihood of confusion between the mark filed and the mark on which the third party claims prior rights. A trademark must therefore be refused registration if, because of its identity or similarity to an earlier trademark and because of the identity or similarity of the goods or services that the two trademarks designate, there is a likelihood of confusion, including a likelihood of association, in the minds of the public with the earlier trademark . The assessment of the likelihood of confusion involves establishing that the visual, auditory or conceptual similarity of the marks at issue will lead the average consumer to believe that the contested mark is a variation or adaptation of the earlier mark . This similarity must be based on the overall impression produced by the marks, taking into account in particular the distinctive and dominant elements of the marks . The assessment of the likelihood of confusion requires taking into account all the relevant factors characterizing the relationship between the goods or services, and in particular their nature, purpose, use, as well as their competing or complementary character .

Goods or services are similar by way of complementarity if there is a close and inevitable link between them such that the public can attribute the same origin to them . The fact that goods or services belong to the same class or to different classes has no bearing on the assessment of their identity or similarity ( Art. R. 712-3-1, para. 4, IP Code). An occasional or random similarity is insufficient to characterize complementarity . A low degree of similarity between the designated goods or services can be compensated by a high degree of similarity between the marks, and vice versa . The opposition will be rejected if the opponent cannot prove, upon request of the owner of the registration, a serious use of his mark in the five years preceding the contested filing date, or that there were just reasons for non-use ( Art. L. 712-5-1 IP Code).

Decisions of the INPI director general may be appealed to the courts of appeal designated by the relevant regulations (Article R. 411-19 IP Code), within one month following notification of the opposition ruling (Article R. 411-21 IP Code). In this context, the courts must limit their examination to an objective assessment of the likelihood of confusion capable of affecting the trademarks under their review, on the basis of specific criteria . The Court of Appeal may proceed to a partial cancellation, by limiting the nullity to certain provisions of the decision .

CA Bordeaux, 12 April 2010, LawLex202200001649JBJ.

CA Paris, 28 June 2016, LawLex202200000028JBJ; CA Paris, 1 March 2016, LawLex202200000026JBJ; CA Paris, 22 May 2015, LawLex202200000027JBJ.

CA Paris, 28 June 2016, LawLex202200000028JBJ; CA Paris, 22 May 2015, LawLex202200000027JBJ; Cass. com, 9 March 2010, LawLex202100005677JBJ.

CA Paris, 1 March 2016, LawLex202200000026JBJ; CA Paris, 22 May 2015, LawLex202200000027JBJ.

CA Paris, 28 June 2016, LawLex202200000028JBJ.

CA Paris, 22 May 2015, LawLex202200000027JBJ.

Cass. com, 15 January 2013, LawLex202100006447JBJ.

Industrial Property Law

80. Decision of Director General

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80. Decision of Director General

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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