Industrial Property Law

The National Institute of Industrial Property upholds and observes the principle of adversarial proceedings (Art. R. 716-3 IP Code). The INPI official who reviews the application for invalidity or revocation of a trademark may not examine the application for registration of that trademark or an opposition filed against an application for registration of that trademark (Art. R. 716-4 IP Code).
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Review stage

The director general of the INPI rules on the application for invalidity or revocation in the light of all the written and oral observations presented, if any, by the parties (Article R. 716-7 IP Code). He or she may dismiss the application pursuant to Article 122 of the Code of Civil Procedure, or issue a judgment on the merits. The application for revocation or invalidity is deemed to have been refused if it has not been decided within three months, which runs from the date of the end of the investigation phase. This end date occurs if one of the parties has not submitted observations by the end of the deadlines specified in Article R. 716-6 of the IP Code and, at the latest, on the day of the presentation of oral observations, the date of which is promptly notified to the parties (Art. L. 716-1, para. 4, and R. 716-8, para. 1, IP Code).

At the request of the successful party, the director general of the INPI imposes on the losing party all or part of the costs incurred by the former within the limits of a scale fixed by order of the minister responsible for matters relating to intellectual property (Art. L. 716-1-1 IP Code).

The investigation phase and the three-month period within which the director general of the INPI must give a judgment may be suspended when the application for invalidity is based in whole or in part on an application for registration of a trademark or a geographical indication or on a geographical indication whose specifications have been amended in such a way as to affect the basis of the application (Art. R. 716-9, 1° IP Code), in the event of an application for invalidity, revocation, claim of ownership or assignment under Article L. 712-6-1 of the trademark or one of the trademarks on which the application for invalidity is based, in whole or in part (Art. R. 716-9, 2° IP Code), or in the event of an action against the corporate designation or name, the domain name, the trade name or the trade sign, on which the request for a declaration of invalidity is based, in whole or in part (Art. R. 716-9, 3° IP Code). They may also be suspended by joint demand of the parties, for a period of four months, renewable twice (Art. R. 716-9, 4° IP Code), or at the initiative of the INPI, especially pending information and elements likely to have an impact on the outcome of the dispute or the situation of the parties (Art. R. 716-9, 5° IP Code).

Decision of the INPI

The application for invalidity or revocation filed with the INPI is presented in writing in accordance with the conditions and procedures established by decision of the director general of the INPI (Art. R. 716-1, para. 1, IP Code). It includes, namely, the identity of the applicant, the information necessary to establish the existence, nature, origin and scope of the prior rights invoked, the references of the contested mark, the indication of the goods or services covered by the request for invalidity or revocation, as well as a statement of the grounds on which the request for invalidity or revocation is based (Art. R. 716-1, para. 2, IP Code). Once filed, the request for invalidity or revocation cannot be extended to other grounds or other goods or services than those invoked or referred to in the initial application (Art. R. 716-1, para. 3, IP Code).

An application for invalidity or revocation is inadmissible if it is filed in violation of Article L. 716-5 of the Intellectual Property Code relating to the rules governing the division of powers between the INPI and the judicial courts, or if it is filed by a person who is not competent or does not meet the conditions set forth in Articles R. 716-1 and R. 716-2 of the Intellectual Property Code (Art. R. 716-5 IP Code).

Filing of the application

The National Institute of Industrial Property upholds and observes the principle of adversarial proceedings (Art. R. 716-3 IP Code). The INPI official who reviews the application for invalidity or revocation of a trademark may not examine the application for registration of that trademark or an opposition filed against an application for registration of that trademark (Art. R. 716-4 IP Code).

The proprietor of the contested mark is notified of the application for invalidity or revocation. He or she is given a two-month deadline to submit written observations in response and, if necessary, to produce any documents that he or she considers useful. In the event of a reply, the applicant has one month to submit written observations in response and to produce any documents deemed relevant. In the event of a reply from the applicant, the proprietor of the mark will have a further period of one month in which to submit new observations or produce new evidence. The applicant and the proprietor of the trademark may conduct a final exchange of observations within one month for each party (Art. R. 716-6, para. 1, IP Code).

The parties may present oral arguments, at their own request or at the initiative of the director general of the INPI, if he or she deems it appropriate for the needs of the review. The oral observations are presented at the end of the written phase (Art. R. 716-6, para. 2, IP Code).

The applicant for invalidity may, by express petition at any time during the proceedings, abandon one or more of the grounds relied on. The scope of the application may also be limited by the applicant for invalidity or revocation to certain goods or services invoked or covered (Art. R. 716-7, para. 2, IP Code). 

Invalidity or revocation proceedings are closed where the applicant has withdrawn the claim, where he/she no longer has standing, where the application is devoid of purpose as a result of an agreement between the parties, where the effects of the mark against which the application has been made have ceased, unless the applicant can show a legitimate interest in obtaining a judgment on the merits of the case, where the effects of all the earlier rights invoked have ceased, or where, after the suspension of invalidity proceedings in the cases provided for in Article R. 716-9 of the Intellectual Property Code, the applicant has not responded, within the time-limit set by the INPI, to the latter's notice inviting him to inform it of the outcome of the proceedings initiated (Art. R. 716-11 IP Code). However, if the opposition is based on several prior rights, the closure only concerns the prior rights that are deemed to be unfounded in application of the preceding provision, and the director general of the INPI gives a ruling on the remaining prior rights. The parties are immediately notified of the judgment closing the proceedings.

Closing of proceedings

Appeals against decisions of the director general of the INPI on applications for invalidity or revocation of trademarks are appeals for review, which produce a suspensive effect and refer the entire dispute to the Court of Appeal, which will rule on the facts and on the law (Art. R. 411-19, para. 2, IP Code). The court of appeal with territorial jurisdiction to hear the case is that of the place where the person filing the appeal resides (Art. R. 411-19-1 IP Code).

Industrial Property Law

210. Review stage

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Les notions juridiques connexes

210. Review stage

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Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise