Industrial Property Law

Relationship between judicial and administrative proceedings
An application for invalidity or revocation of a mark is inadmissible when a judgment has already been rendered concerning an application having the same subject matter and cause of action, between the same parties in the same capacity, by the INPI or by a court, and that judgment is no longer subject to appeal (Art. R. 716-13, para. 1,  …

Relationship between judicial and administrative proceedings

Directive No 2015-2436 of 16 December 2015 requires EU Member States to provide for an administrative procedure for revocation and invalidity before national intellectual property offices. This procedure is contained in Articles L. 716-2 et seq. of the Intellectual Property Code. Prior to this reform, actions for invalidity and revocation were dealt with by the judicial court (former Article L. 716-3 IP Code).

The director general of the INPI now has sole jurisdiction to hear trademark revocation claims, filed primarily for failure to use a trademark that has become customary or misleading, or specific revocation claims for guarantee or collective trademarks (Art. L. 716-5, I, 2° IP Code).

He or she also has exclusive jurisdiction for trademark invalidity claims under Article L. 716-5, I, 1° IP Code based on:

- one of the absolute grounds for invalidity of article L. 711-2 of the Intellectual Property Code,

- a prior right to a trademark, a company designation or name (dénomination/raison sociale), a trade name, a sign or a domain name of more than local scope, a registered geographical indication or an application for a geographical indication subject to the approval of its specifications and its subsequent registration, the name, image or reputation of a territorial authority or a public establishment for inter-communal cooperation or the name of a public entity (Articles L. 711-3, I, 1° to 5°, 9° and 10° IP Code),

- a registration applied for by the agent or representative of the proprietor of a trademark in his own name and without the proprietor's consent (art. L. 711-3, III IP Code),

- one of the grounds for invalidity of a guarantee or collective mark ( Art. L. 715-4 and L. 715-9 IP Code).

The administrative decision of the director general of the INPI has the same effects as a court ruling (Article L. 716-1, para. 3, IP Code).

Jurisdiction of the INPI

Other civil actions and claims relating to trademarks, including those involving a related issue of unfair competition, are brought solely before the judicial courts (Art. L. 716-5, II IP Code). For invalidity proceedings, this concerns claims based on certain grievances such as infringement of copyright, designs and personality rights.

Moreover, under Article L. 716-5, II, paragraph 2, of the Intellectual Property Code, the judicial courts have exclusive jurisdiction when a claim for revocation or for invalidity is filed:

- as a principal claim or as a counterclaim in connection with any other claim falling within the jurisdiction of the court, and in particular in connection with an action based on trademark infringement, interim measures of protection, seizure for infringement (saisie-contrefaçon), a right of information or an unfair competition action; 

- while probatory measures or interim protective measures ordered to stop an infringement of a trademark right are being implemented before the initiating of an action on the merits.

Article D. 211-6-1 of the Code of Judicial Organization lists the ten judicial courts specialized in matters relating to intellectual property.

Jurisdiction of the judicial courts

An application for invalidity or revocation of a mark is inadmissible when a judgment has already been rendered concerning an application having the same subject matter and cause of action, between the same parties in the same capacity, by the INPI or by a court, and that judgment is no longer subject to appeal (Art. R. 716-13, para. 1, IP Code).

Where a counterclaim for invalidity or revocation of a mark is brought before a court after an application has been filed between the same parties and for the same facts before the INPI, the court may stay the proceedings until the day on which the ruling on invalidity or revocation is no longer subject to appeal (Art. R. 716-14, para. 1, IP Code). During the stay of proceedings, any interim and protective measure may be ordered (Art. R. 716-14, para. 2, IP Code).

Industrial Property Law

207. Relationship between judicial and administrative proceedings

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Les notions juridiques connexes

207. Relationship between judicial and administrative proceedings

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Les notions juridiques connexes

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