New definition of the concept of "trademark" removing the requirement of graphic representation (rewriting of article L711-1 of the CPI ). This relaxation makes it possible to encompass a greater number of signs liable to be filed as trademarks, such as sound marks, multimedia marks, olfactory marks, etc.

Removal of the distinction between figurative and semi-figurative marks. Semi-figurative marks are grouped under figurative marks.

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

It is now possible to base an opposition on several prior rights – in particular company names, trade names, trade names 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 ).

Reinforcement of the proof of the use of the mark during the opposition of an earlier mark ( art. L712-5-1 of the CPI ): when the earlier mark has been registered for more than 5 years at the time of the date of filing of the opposite mark, it will be necessary to prove the use of the earlier mark (packaging, marketing documents, photographs, invoices, etc.) for each product or service invoked. Failing to report this proof of use, the opposition request will be rejected .

Procedural developments :

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

The opposition becomes an adversarial procedure , with up to three possible exchanges from each of the parties, including an investigation phase at the end of which the director of the INPI will have to rule on the opposition request ( article L712-5 of the ICC ).

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

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

From April 1, 2020 and in order to "divert part of the technical litigation", exclusive competence of the INPI for :

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

actions brought primarily for nullity on absolute grounds (absence of distinctive character) and on relative grounds (existence of prior rights).

With regard more specifically to the nullity action:

Reinforcement of proof of use of the earlier mark registered for more than 5 years for each product or service ( art. L716-2-3 of the CPI ) – Proof of 2 uses :

1) proof of genuine use during the 5 years preceding the date on which the request for nullity was filed;

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

Imprescriptibility of the nullity action , unless it is based on a well-known mark, prescribed in this case by 5 years from the date of registration of the said well-known mark.

These actions for revocation and nullity do not require no evidence of an interest in acting.

The director of the INPI rules at the end of an adversarial procedure including an investigation phase. Its decision produces the same effects as a judgement .

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

– an action for nullity , when it is based on an infringement of a copyright, a right to designs and models or a right of personality;

– an action for nullity and forfeiture , when the requests are related to any other request falling within their jurisdiction (for example, during a request for unfair competition);

– an action for nullity and forfeiture , when probative, provisional or conservatory measures have been ordered to put an end to an infringement of a trademark right and these measures are in progress before an action on the merits.