Trademark Opposition procedure before the INPI: Essential steps
If you consider that the filing of a French trademark (or an international trademark designating France) infringes your rights, it is essential to file an opposition to its registration. Similarly, if you receive a notification of opposition to your trademark, it is necessary to develop a response strategy based on the arguments and rights at issue. This article provides a comprehensive overview of all stages of the opposition procedure in France.
Understanding prior rights and grounds for opposition
The prior rights that may be invoked are numerous and diverse. The 2019 reform significantly extended the possible grounds for opposition, which may notably include a registered French trademark, a European Union trademark, a well-known trademark (not registered but known), a trademark with reputation, the name of a territorial community, a domain name, or a protected designation of origin (PDO), protected geographical indication (PGI), geographical indication (GI), or any other geographical indication.
An important development introduced by the 2019 reform is that it is now possible for the same right holder to invoke multiple rights in support of a single opposition. This flexibility allows trademark owners to present a more comprehensive case by leveraging various forms of intellectual property protection simultaneously, thereby increasing the chances of success in opposition proceedings.
Step 1: Filing the opposition with INPI
The opposition request must be filed imperatively through the INPI platform within two months following the publication of the contested trademark. This is an administrative and written procedure, entirely dematerialized, which has streamlined the opposition process and made it more accessible to trademark owners both in France and internationally.
It is essential to gather the documents for your case. In addition to a copy of the publication of the contested trademark and proof of payment of the opposition fee, these documents depend on the prior right invoked. With the assistance of a lawyer if desired, it is necessary to prepare astatement of arguments aimed at demonstrating the infringement of your prior right.
To accomplish this, focus on two essential points that allow assessment of the likelihood of confusion:
Comparison of goods and services: All relevant factors must be considered in order to assess the identity or similarity of the goods and services concerned. Among these factors are their nature, method of use, relevant public, whether they are in competition or complementary, and distribution channels. In practical terms, even if the wording of certain goods or services is not identical, the likelihood of confusion may be esthablished on the basis of these elements. For instance, wines and spirits may be considered similar due to overlapping distribution channels and target consumers, even though they are distinct products.
Comparison of signs: It is necessary to indicate whether they are similar or identical, to identify the points of resemblance between the two signs, and to develop the likelihood of confusion in the minds of the public. Similarities can be visual, phonetic, conceptual, or any combination thereof. Visual similarity considers the overall appearance and distinctive elements, phonetic similarity examines pronunciation and sound patterns, while conceptual similarity focuses on the meaning and ideas conveyed by the marks.
These elements help highlight the likelihood of confusion between the element establishing your prior right and the filed trademark. The assessment of the likelihood of confusion is further articulated with the perception of trademarks by the relevant public, namely the average or informed consumer depending on the goods and services in question, and the principle of interdependence between the comparison of goods and services and that of signs. In practical terms, signs presenting a low degree of similarity for identical goods and services may give rise to a likelihood of confusion. The same applies to goods and services with a low degree of proximity if the signs of the two trademarks are identical or very close.
Step 2: adversarial exchange phase
If the INPI considers the request admissible, the applicant is notified of the opposition against their trademark application. The applicant then has a period of two months to submit their observations in response to the opposition. These observations may particular concern the admissibility of the opposition, the comparison of goods and services, the comparison of signs, and the overall assessment of the likelihood of confusion.
At this stage, it is essential for the applicant of the new trademark to assess the arguments and risks at issue and to consider the grounds of the opposition in order to respond effectively. A well-crafted response may address weaknesses in the opposition, present countervailing evidence, or demonstrate that the marks can coexist without consumer confusion.
If the opposition is based on a trademark, the applicant may, in its initial observations, request proof of genuine use of your trademark relied upon if it has been registered for more than five years. This mechanism prevents trademark owners from maintaining unused marks solely in order to block legitimate new applications. If the opponent fails to provide such proof within a period of one month, or if these evidence shows that the trademark is not used for the goods or services forming the basis for the opposition, they risk an action for revocation of their trademark. This mechanism ensures that the trademark register reflects marks that are actully used in trade.
For this reason, it is strategic to build evidence of use throughout the life of your trademark. These elements can be usefully produced in contentious or non-contentious proceedings. Evidence may include invoices, advertising materials, packaging, promotional campaigns, sales figures, market surveys, and any documentation demonstrating continuous commercial use of the trademark in connection with the registered goods or services.
The duration of the opposition examination phase depends on the number of exchanges between the parties. The opponent may, at any time during the procedure, withdraw one or more prior rights or limit the scope of their request to certain invoked or designated goods or services, as provided in Article R.712-16-1 of the French Intellectual Property Code. The parties may jointly request a suspension of the procedure in order to negotiate and attempt to reach an agreement. If the parties succeed, the opposition request is withdrawn or limited to the points that have not been the subject of an agreement.
In practice, lawyers frequently negotiate coexistence agreements, in particular agreement limiting the use of the trademark to certain goods or services or modifying the wordings of the trademark. These agreements can be beneficial for both parties, allowing the new trademark to proceed while respecting the legitimate interests of the prior rights holder. Such settlements often include territorial restrictions, limitations relating to specific product categories, or requirements for disclaimers in order to prevent consumer confusion.
Step 3: INPI Decision
Failing an agreement, at the end of the adversarial exchanges, the examination phase comes to an end, and the INPI must rule on the opposition within a period of three months. The INPI decides by considering all written and oral observations submitted by the parties, thereby ensuring a fair and thorough assessment of the case.
Depending on whether the opposition is upeld in whole or in part, or rejected, the opposition may result in: the rejection of the contested trademark application, or the partial or total registration of the contested trademark. A partial registration typically involves limiting the scope of goods or services covered by the trademark to avoid overlap with the prior rights.
Step 4: Publication and possible appeals
If the applicant for registration of the new trademark is rejected by the INPI, the decision ruling on the opposition is published in the Official Bulletin of Industrial Property (BOPI), thereby ensuring transparency of the trademark registration system. It is possible to appeal decisions of the Director General of the INPI before the Court of Appeal within one month from notification of the decision. From the filing of the appeal, a period of three months is then granted to submit pleadings to the court registry.
It is mandatory to appoint a lawyer for this procedure. Legal representation ensures that complex legal arguments are properly articulated and that procedural requirements are complied with. The appellate procedure provides an important safeguard, allowing parties to obtain judicial review of administrative decisions and ensuring that trademark rights are determined through a comprehensive legal process.
It is essential to maintain active monitoring of your rights to protect them effectively. The firm, specialized in trademark law, identifies the prospects of success of actions and assists you with all procedures and negotiations relating to your intellectual property rights, providing strategic guidance throughout the opposition process and beyond.
Stéphane Bellec, Partner
Intellectual Property Attorney
Email: sbellec@debaecque-avocats.com
Tel: +33 (0) 1 53 29 90 00