Initial experience of the “new” trademark opposition proceedings before the French IP Office: review of a year of opposition, French style
A great deal has happened in just over a year, and especially since transposition of Directive 2015/2436 of 16 December 2015 which brought major reforms to trademark opposition proceedings before the French IP Office.It is doubtless too soon to derive real lessons from these new proceedings, though some significant advances can already be hailed. A little more perspective – and the study of a few decisions of the French IP Office – will be needed in order to fully apprehend this new regime and in particular the practice of the Office in this field.
The changes made by the new opposition proceedings as well as their characteristics – especially as regards the new rights and grounds that can be asserted and the conduct of the proceedings – have already been widely commented upon.
We will dwell here on a few of the most notable aspects of this new regime and the uncertainties that still remain. Moreover, it would appear helpful to compare some of the specificities of the new proceedings not with the former proceedings, but with those already in place before the EUIPO (which “inspired” the new French proceedings, while care was taken here, as well as in other fields, to distinguish and preserve a few French specificities and exceptions.
As to the possibility now of filing a “formal” opposition
The official term for filing an opposition before the French IP Office is still two months from publication of the application for registration of the contested trademark [Art. L.712-4 of the French IP Code].
The first real difference to note in practice under the new proceedings is that a “formal” opposition can now be filed (which corresponds to the “notice of opposition” filed before the EUIPO).
The statement/brief setting out the evidence backing up the opposition (without extending the scope or grounds thereof) as well as the arguments in support (corresponding to the “facts, evidence and arguments” filed before the EUIPO) however must be filed within an additional period of one month following expiry of the opposition term [Art. R.712-14 of the French IP Code].
There are several observations to make on this:
- In a sense, there is a certain logic to the additional period of one month provided in the last paragraph of Art. R.712-14 of the French IP Code Since it is now possible to assert several rights in the same opposition (provided, of course, that they belong to the same owner), the preparation of a statement/brief of the evidence and of the supporting exhibits (for example concerning so-called well-known trademarks) requires ipso facto a little more time.
- Furthermore, this additional month gives a few additional weeks to the parties to attempt, if possible, to reach an amicable settlement.
- There are those who regret the fact that it is not possible for the parties to apply jointly, between filing the formal opposition (after the two months term) and filing the statement/brief, for a suspension of the proceedings (even in the event of negotiations between the parties, with a view to reaching an amicable solution).
*This suspension can be applied for jointly by the parties, “for a period of four months renewable twice”, but only during the investigation phase (or within three months following the end of the investigation phase, before the French IP Office rules on the opposition) [art. R. 712-17 of the IP Code].
While it is possible, before the EUIPO, to jointly seek an extension of the so-called “cooling-off” period, before the start of the adversarial part of the proceedings (and thus before filing a brief/arguments on the merits), this is not the case before the French IP Office prior to the so-called “investigation” phase.
- Another feature which differentiates the new opposition proceedings before the French IP Office from that applied before the EUIPO: in France, the opposition [if it is considered admissible] is officially notified to the applicant for the contested trademark application only once the investigation phase of the proceedings has begun [art. R712-16-1]; that is to say when the opponent has presented its brief setting out the evidence and arguments for the opposition.
Nota bene: The EUIPO “immediately” notifies the applicant with the notice of opposition, and only then communicates – to both parties – the calendar applicable to the proceedings [informing them thereby of the term of the “cooling-off” period].
In France, however, the applicant for the contested trademark application is nevertheless automatically warned, by electronic communication, of the filing of a new document on its on-line platform, enabling it to be informed of the notice of opposition and the evidence and arguments asserted by the opponent.
Strengthening of the “adversarial” principle and the balance of the means for attack and defense
The new trademark opposition proceedings before the French IP Office:
- Strengthens the “adversarial” principle [Art. L.712-5 IP Code], enabling the parties to exchange/counter their arguments throughout the proceedings, with several exchanges of written submissions being possible;
- Gives a much more important and even a decisive role to evidence of use of the prior trademark or trademarks asserted; this being of course to the extent that those rights are subject to a requirement of use.
These are significant developments to be credited to the new proceedings, in that they truly enable a better balance between attack and defense to be found.
Regarding the first aspect, these opposition proceedings thus give the parties the possibility of countering each other’s arguments.
Nota bene: Hitherto, the applicant for the contested trademark application could make only a single reply to the opponent’s arguments/brief, thus closing the pleadings until a draft decision was issued; this deprived the opponent of any possibility of filing new arguments linked to the same grounds [except for the possibility of submitting them to challenge the decision].
In practice, the new proceedings in particular enable the applicant or the opponent to leave unanswered certain assertions that may be peremptory, legally unfounded, or even of no bearing at all in the context of the proceedings, or, from another point of view, to detail, clarify and supplement certain arguments by concentrating on particular factors which may be more or less decisive in the context of the overall assessment of the risk of confusion.
In total, each party has three opportunities to present its arguments; the “last word” going to the applicant for the contested trademark application. The duration of the proceedings thus varies according to the number of written submissions / counter-arguments submitted by the parties.
There are several observations to make on this:
- Some lament the short length of the official term available to the opponent – only one month* – to present “written observations in reply or any evidence it considers useful and, if appropriate, file evidence to establish genuine use or proper grounds for non-use of the prior trademark concerned, in accordance with the provisions of Article L.712-5-1” [Art. 712-16-1 IP Code]; it not being possible to apply for an extension of term.
*By contrast, the opposition proceedings before the EUIPO provide a term of two months, with the possibility of applying for an extension of term of two months, i.e. four months in total.
To seek, collect and arrange the dated evidence of genuine use, in addition to arguments on the merits, within a period of only two months may in practice prove complicated to say the least and requires anticipation well in advance for such constitution of evidence.
- One factor that distinguishes the new opposition proceedings before the French IP Office from EUIPO practice: in France the last word goes to the defendant/applicant for the contested trademark application, if that party so wishes; which is not the case in the opposition proceedings before the EUIPO, with adversarial phases which can end just after observations by the opponent in reply.
Regarding the second aspect, in the context of its defense, the applicant for the contested trademark application can invite the opponent asserting a prior trademark to file the evidence capable of establishing that genuine use has been made of such a trademark.
Admittedly, this possibility was already given in the former opposition proceedings. However, the role of the French IP Office in examining evidence of use was rather limited. The Office simply checked that the exhibits/evidence provided by the opponent was of such a nature as to attest use (and not attest “actual” use).
Henceforth, it is incumbent upon the French IP Office to conduct an examination/detailed check of the relevance of the evidence of use submitted to it; which considerably augments its role.
Another “revolution” (doubtless the most important) and which marks harmonization with EUIPO practice: genuine use of a trademark must be provided for all/each of the goods and/or services covered by the prior trademark or trademarks asserted in support of the opposition; which will appreciably complicate the task of the opponents.
The former regime was particularly “favorable” to the opponent in relation to evidence of use, on two counts:
- Examination of the relevance of the evidence, by the French IP Office, was on the whole rather superficial;
- Furthermore, the opponent was able to merely show use of a trademark for a single one of the goods and/or services asserted in support of the opposition.
Thus, in concrete terms, an opposition could be held to be justified by the French IP Office due to a risk of confusion with a prior trademark, protected for a plethora of goods/services, even if that trademark was – in practice – used for only some of them.
The new regime logically puts an end to this “facility” and that system which was rather unjust for applicants and now, for the opponents, lays down requirements which indirectly invites them:
- To delimit the scope of their oppositions with greater care/precision;
- Only to invoke goods/services for which genuine use could, if appropriate, be shown [this being placed in context by the possibility henceforth of filing actions for revocation for lack of use directly before the French IP Office.
- To review more generally their opposition strategy and thus examine more prudently the interest/opportunity for undertaking opposition proceedings that relate to goods/services too far removed from their sectors of activity;
- To consider other prior rights, of different natures, which could be asserted and for which the evidence of genuine use, over a specific reference period, would not have to be filed.
The disappearance of the “draft decision”
The disappearance of the “draft decision” – would could be contested by one and/or the other of the parties – is doubtless one of the more radical changes in the new proceedings; and doubtless the one missed the most, by both opponents and applicants.
Henceforth, it is no longer possible to contest a draft decision by the French IP Office in opposition proceedings. The new regime here too has been harmonized with that of the opposition proceedings before the EUIPO; with a single difference: it is possible, before the EUIPO to appeal against a decision before the Boards of Appeal. Such an instance does not (yet?) exist in the French IP Office.
The draft decision and the possibility of challenging it gave the French IP Office the opportunity to reexamine the proceedings in the light of new comments, to clarify its positions and detail/supplement certain arguments, or even retract, and was of appreciable value.
There are several observations to make on this:
- Certain draft decisions* sometimes enabled the parties, before final decisions were handed down, to commence or resume negotiations and – even with a very tight deadline (one month) – to reach amicable agreements.
*In particular in the case of draft decisions that were partially favorable/unfavorable (depending on which point of view).
- From the point of view of the opponent, it was possible – in the case of an unfavorable draft decision – to withdraw its opposition before the decision became final; which made it possible to ensure that the draft decision never became public.
- In the former proceedings, oral hearings no doubt fully had their place between the two stages (after the draft decision/before the final decision); which was the final opportunity to assert arguments orally and attempt (physically) to convince the examiners in one direction or the other.
Admittedly, with the new proceedings, each party can – in the system for submitting written observations – present observations orally. The Director General of the French IP Office can also, at his or her own initiative, invite the parties to present oral observations if this is considered necessary for the investigation.
Nevertheless, one may wonder whether, with the new proceedings, the parties will request as many hearings as previously, in particular in the “post draft decision” phase.
A few uncertainties as to the practice of the French IP Office
Beyond (or falling short of) the legal provisions and “technical” aspects of the new opposition proceedings, a few questions remain as to how the French IP Office will examine opposition proceedings.
Among these, it may for example be wondered whether the French Office, like the EUIPO, will in some proceedings decide “for reasons of procedural economy” (to use the dedicated and rather over-used formula of the EUIPO), not to examine:
- Evidence of use that the opponent filed;
As a matter of fact, the French IP Office could very well consider that in some situations the analysis of the evidence of use would in no case have any incidence on the outcome of an opposition, for example in a scenario of signs and/or goods and services that are substantially different.
- One of the multiple grounds for a particular opposition.
Consider for example an opposition in which several trademarks had been cited. If only one of those trademarks would suffice to show the existence of a risk of confusion and therefore give rise to rejection of the contested trademark application, is the French Office nevertheless required to rule on each of the prior trademarks (or other asserted rights)?
The same question arises in the case of a particular trademark for which have been asserted both the provisions of Art. L.711-3 on the (classic) risk of confusion and those of Art. L. 711-3 para. 2 (as to reputation, this being the counterpart to Art. 8(5) EUTMR). The Opposition Division of the EUIPO sometimes chooses, in this type of case, not to examine the second ground (Art. 8(5) EUTMR) where the first (art. 8(1)(b) EUTMR) suffices for the rejection of the contested trademark application.
Will we see the French IP Office align itself with the practice of the EUIPO in these matters? It should be borne in mind that in the new opposition proceedings, each additional item of prior art (beyond the first) asserted by the opponent requires payment of an official fee of EUR 150 (which is not the case before the EUIPO).
We remain entirely at your disposal to assist you in any opposition proceedings and will not fail to share with you and keep abreast of developments regarding these “new” French proceedings.
Ali BOUDJEDIR is an Intellectual Property Attorney and joined Santarelli in 2018. He has some ten years experience in IP firms and today assists a varied clientele, mainly in matters of trademarks and domain names.