A new definition of the concept of "trademark" has been introduced, removing the requirement for graphic representation (rewriting of Article L711-1 of the French Intellectual Property Code ). This relaxation allows for the inclusion of a larger number of signs that can be registered as trademarks, such as sound marks, multimedia marks, olfactory marks, etc.

The distinction between figurative and semi-figurative trademarks has been eliminated. Semi-figurative trademarks are now grouped under figurative trademarks.

New filing fees and possibility of filing a trademark for a single class : the flat rate for three classes is eliminated and a system of tax per class is instituted: for a filing in a single class, the tax is 190 euros, with a tax of 40 euros per additional class beyond the first class.

It is now possible to base an opposition on several prior rights – including company names, trade names, signs and domain names, registered geographical indications, the name, image or reputation of a public entity – provided that they belong to the same holder ( art. L712-4 of the CPI ).

Strengthening the burden of proof of trademark use when opposing an earlier trademark ( Article L712-5-1 of the French Intellectual Property Code ): when the earlier trademark has been registered for more than 5 years at the time of filing the opposing trademark, proof of use of the earlier trademark (packaging, marketing materials, photographs, invoices, etc.) must be provided for each product or service cited. Failure to provide this proof of use will result in the opposition being dismissed .

Procedural changes :

The deadline for filing an opposition is always 2 months from the date of publication of the application for registration in the BOPI ( Article L712-3 of the CPI ). However, the opponent may provide, within an additional month, a statement of grounds based on the comparison of goods and services and that of the comparison of signs (Article 4 II of Decision No. 2019-158 of 11 December 2019 of the INPI);

The opposition becomes an adversarial procedure , with up to three possible exchanges by each party, including an investigation phase at the end of which the director of the INPI must decide on the opposition request ( article L712-5 of the CPI ).

The INPI will make a final decision (the draft decision is withdrawn), which will be subject to appeal before the Court of Appeal.

The 6-month deadline imposed on the INPI to rule on the opposition is removed , which makes the duration of the opposition procedure uncertain.

Effective April 1, 2020, and in order to "remove some technical disputes from the courts", exclusive jurisdiction of the INPI For :

all actions brought primarily on the grounds of forfeiture (failure to use, degeneration, misleading the public);

actions brought primarily for annulment on absolute grounds (absence of distinctiveness) and on relative grounds (existence of prior right).

More specifically regarding the action for annulment:

Strengthening of proof of use of the prior trademark registered for more than 5 years for each product or service ( art. L716-2-3 of the French Intellectual Property Code ) – Proof of 2 uses :

1) proof of serious use during the 5 years preceding the date on which the application for annulment was made;

2) proof of genuine use during the 5 years preceding the filing date or the priority date of the later mark.

The action for invalidity is imprescriptible , except if it is based on a well-known trademark, in which case it is prescribed by 5 years from the date of registration of said well-known trademark.

These actions for forfeiture and nullity do not require not proof of a legal interest.

The director of the INPI makes a decision at the end of an adversarial procedure that includes an investigation phase. His decision has the same effect as a judgment .

The regional courts, which became judicial courts on January 1, 2020, will now have jurisdiction in cases :

– an action for annulment , when it is based on an infringement of a copyright, a design right or a personality right;

– of action for nullity and forfeiture , when the claims are related to any other claim falling within their jurisdiction (for example, in the case of a claim for unfair competition);

– of action for nullity and forfeiture , when evidentiary, provisional or protective measures have been ordered to stop an infringement of a trademark right and these measures are being executed before an action on the merits.