The administrative procedure for revocation or declaration of invalidity already exists for EU trademarks before the EUIPO but is entirely new with respect to French trademarks before the French Patent and Trademark Office (INPI).
Such a procedure, formally comparable to the opposition procedure, now falls under the exclusive jurisdiction of the INPI if this is:
- An application for revocation of a trademark, in particular if, within a continuous period of five years, the mark has not been put to genuine use in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;
- An application for invalidity when the mark should not have been registered on absolute rounds, for example for lack of any distinctive character, and / or if the mark should not have been registered on relative grounds, i.e. because of the existence of an earlier trademark right, company name or domain name.
Judicial courts retain exclusive jurisdiction over:
- Any application for cancellation of a trademark based on at least a copyright, a French registered design or personality rights;
- Any application for cancellation of a trademark which would be related to any other action falling within the jurisdiction of the courts, such as for example an action for infringement, unfair competition or contractual liability.
This new administrative procedure for revocation or declaration of invalidity provides for an accelerated and more cost-effective route as compared to prior legal actions brought before the courts, and should contribute to reduce the overload of the trademark register.
© INSCRIPTA
