Appeals in reformation and annulment against INPI Decisions

The Directive of December 16, 2015, on trademark law introduced administrative procedures for the revocation and cancellation of trademarks before the INPI (French National Institute of Industrial Property). The Ordinance of February 12, 2020, subsequently introduced new Article L.411-4 into the French Intellectual Property Code. This article entered into force on April 1, 2020, and authorizes the Director General of the INPI to make decisions provided for by this Code on the occasion of granting, rejecting, or maintaining industrial property titles. Understanding the available appeals against these administrative decisions issued by the INPI is crucial for the effective protection of trademark rights.

Understanding appeals in annulment and reformation

The Director General of the INPI also rules on applications for invalidity or revocation of trademarks filed before the INPI. These two categories of decisions are both subject to appeal, but the applicable form differs and entails significant practical consequences for the parties involved.

Pursuant to Article R.411-19 of the French Intellectual Property Code, the first category of decisions is subject to appeal for annulment, while the second must be challenged through an appeal in reformation. This distinction is extremely important in practice, as the devolutive effect differs substantially between these two procedural mechanisms.

This article specifies that the appeal in reformation refers to the competent court of appeal ‘knowledge of the entire dispute.’ The practical consequence is significant: the competent court of appeal (that of the applicant’s domicile) will not be bound by the arguments submitted before the INPI. New arguments, legal grounds, and evidence may therefore be submitted to the judge’s knowledge, who must then rule on both facts and law with full jurisdiction.

The appeal in reformation: scope and procedure

The appeal in reformation offers the parties with a genuine opportunity to present their case comprehensively, unconstrained by the administrative record developed before the INPI. This full review mechanism serves important policy objectives: it ensures thorough judicial examination of trademark validity and revocation issues, provides a meaningful check on administrative decision-making, and allows parties to develop their legal positions more completely than may have been possible in the initial administrative proceeding.

This procedural framework has significant practical implications for trademark litigation strategy. Parties who may have been disadvantaged by time constraints, resource limitations, or strategic miscalculations during the INPI proceeding have a second chance to present their strongest case. However, this flexibility also means that the appellate proceeding may become substantially more complex and expensive than the initial administrative phase.

Practical examples of appeals in reformation

In a decision dated December 13, 2021, the Court of Appeal of Nancy was seized of an appeal in reformation lodged by the holder of a trademark. The trademark holder asserted prior rights before the INPI to obtain partial invalidity of another trademark. The application was rejected as the INPI considered that evidence of prior use had not been sufficiently established.

On appeal, the trademark holder was able to present new arguments, legal grounds, and evidence, ultimately convincing the trial judges. This case illustrates the value of the reformation appeal mechanism: parties whose cases were insufficiently developed or inadequately assessed at the administrative level may still obtain judicial relief through full review. The court’s willingness to admit new evidence reflects the recognition that the administrative proceeding may not have fully explored all relevant facts.

The Court of Appeal of Aix-en-Provence was also seized with an appeal in reformation, but this time relating to a decision that had only partially granting a revocation action. In this case, the new grounds invoked on appeal to obtain total revocation of the trademark for lack of genuine use did not convince the judges, as decided on November 18, 2021.

This decision demonstrates that, although the appeal in reformation allows the introduction of new evidence and arguments, it does not guarantee a favorable outcome. The court of appeal exercises its own independent assessment and may affirm, modify, or overturn the INPI’s decision based on its own evaluation of entire case file. Parties must still meet their burden of proof and present persuasive legal arguments to prevail.

Timing and suspensive effect

This appeal must be lodgedwithin a one-month limit from notification of the decision, pursuant to Article L.421-1 of the French Intellectual Property Code. This short deadline requires parties to act quickly in order to preserve their right to appeal. Unlike some civil procedures where longer appeal periods may apply, trademark disputes require prompt action to avoid losing the opportunity for judicial review.

Moreover, this appeal has suspensive effect, unlike the appeal for annulment of an INPI decision. As a result, the INPI decision does not produce legal effects while the appeal is pending, preserving the status quo until the court of appeal has rendered its judgment. This suspensive effect protects parties against irreversible consequencesthat might result from immediate enforcement of an INPI decision that may subsequently be overturned on appeal.

The suspensive effect is particularly important in revocation and invalidity proceedings. If an INPI decision revoking or invalidating a trademark took immediate effect, the trademark owner would lose protection in the marketplace even though the decision might later be reversed. The suspensive effect maintains trademark rights during the appellate process, preventing market disruption and potential loss of goodwill.

Policy objectives and civil procedure application

This new procedure aims to relieve the courts by encouraging rights holders to initiate invalidity or revocation actions directly before the INPI. The administrative procedure is generally faster and less costly than judicial litigation, making it an attractive first option for parties seeking to challenge trademark validity.

However, the availability of broad appellate review ensures that parties do not sacrifice procedural rights or substantive justice by utilizing the administrative way. The appeal in reformation bridges the gap between administrative efficiency and judicial rigor, providing a system that promotes initial administrative resolution while preserving full judicial review when parties cannot reach satisfactory resolution at the administrative level.

With the objective of bringing the ordinary appeal procedure closer to that applicable against decisions of the INPI Director, provisions of the French Code of Civil Procedure are applicable. This harmonization allow that parties and courts to rely on familiar procedural rules, reducing complexity and promoting consistent application of procedural law across different types of intellectual property disputes.

Strategic Considerations for Trademark Litigation

The structure of INPI proceedings and appeals creates important strategic considerations for both trademark owners and challengers. Parties must determine the extent of resources and effort to devote to the administrative proceeding, knowing that they may have opportunities to supplement their case on appeal but also facing the risk that additional proceedings will increase costs and delay resolution.

For trademark owners defending against invalidity or revocation actions, the appeal in reformation provides valuable protection. Even if the administrative proceeding is unfavorable, the owner retains the possibility of a comprehensive review by an independent judicial authority. This safety valve may encourage trademark owners to take reasonable positions during the administrative proceeding rather than fighting to the last detail, knowing they can seek fuller review if necessary.

For challengers seeking to invalidate or revoke trademarks, the appeal in reformation presents both opportunities and risks. The opportunity to introduce new evidence and arguments on appeal may allow challengers to overcome weaknesses in their initial case. However, the suspensive effect of the appeal means that even successful administrative challenges do not immediately achieve their practical objective if the trademark owner appeals.

The DE BAECQUE BELLEC firm provides comprehensive guidance throughout INPI proceedings and subsequent appeals. Our expertise in trademark law and administrative procedure enables us to develop effective strategies at each stage of the process. Whether representing trademark owners defending their rights or parties challenging questionable registrations, we leverage our deep understanding of both administrative and judicial procedures to achieve optimal results for our clients. We recognize that success in trademark disputes often depends not only on substantive legal arguments but also on strategic procedural choices made at critical junctures.

Stéphane Bellec, Partner

Intellectual Property Attorney

Email: sbellec@debaecque-avocats.com

Tel: +33 (0) 1 53 29 90 00