Reform of the litigation procedures in the field of trademark and of appeal against décisions of the INPI

The so-called PACTE Law has introduced many changes in the field of industrial property in France, most of which were covered  in our previous newsletters in February, March and May 2020. The final aspect of this reform, formalized in particular in Ordinancen°2019/1169 of 13 November 2019 and Decree no. 2019-1316 of 9 December 2019, consists in the creation before the INPI of a procedure in cancellation and revocation of French trademarks and international trademark registrations designating France. These new procedure before the INPI (1), together with a reshuffle of the appeals regime against its decisions (2), leads to a rethinking of litigation strategies.

1. A NEW CANCELLATION AND REVOCATION ACTION BEFORE THE INPI

Previously, 10 judicial courts had exclusive jurisdiction to hear actions for invalidity or revocation of trademarks. Since April 1, 2020, part of this jurisdiction has been transferred from these courts to the INPI. This new procedure is quite successful as, to date, the INPI has already been seized of approximately 100 cancellation and revocation applications.

Division of jurisdiction between the Tribunal Judiciaire and the INPI (Art L.716-2 and L.716-5 of the Intellectual Property Code) – the new distribution of jurisdiction can be summarised as follows (NB: a court or the INPI seized of a request that does not fall within its jurisdiction declares it inadmissible ex officio):

INPI is now the sole jurisdiction to rule on:

• Principal application for trademark revocation (for non-use or degeneration) 
• Principal applications for trademark cancellation based exclusively on :

– one or more absolute grounds (lack of distinctive character, descriptive character, customary signs, deceiving signs, legally prohibited use, filing in bad faith, etc.)

– and/or the infringement of certain prior rights: trademark with or without reputation, company name, name used in the course of trade, domain name and geographical indication, name, image or reputation of a local authority or a public establishment for inter-municipal cooperation, name of a public entity, case where an agent or representative of the proprietor of the trade mark applied for registration thereof in his own name without the proprietor’s consent. 

NB: one application filed with the INPI may be based on several grounds for invalidity or revocation, but applications for revocation and invalidity must be filed separately. On the other hand, an application can only be for one mark.
The judicial courts (namely Tribunal Judiciaire) keep their exclusive jurisdiction to rule on:

• Applications for cancellation based on infringement of certain prior rights, namely copyright, design, personality right;
• All other trademark demands, e.g.  infringement, nullity or claim of ownership for fraudulent filing (but only, in the latter case, when the deposit was made by a third party and not by the agent or representative of the trademark owner). 
• Main or counterclaims for cancellation and revocation related to another claim under the jurisdiction of the court (e.g. infringement, unfair competition, etc.).
• Applications for cancellation and revocation formed as probationary, provisional or provisional measures are being implemented (e.g. seizure-counterfeiting, provisional prohibition).

In practice…

It is to be noted that the exclusive jurisdiction of the INPI remains limited and that the judge can still be seized depending on the circumstances of the dispute.

It will therefore be necessary to determine the appropriate body on the basis of the rights invoked, the requests sought and the objectives of the applicant. For example, the choice between legal or administrative action may be made taking into account the fact that the procedure before the INPI cannot be accompanied by a request for interim and precautionary measures, nor give rise to the award of damages, but that it is more economical and faster than before the court (between 5 and 11 months depending on the number of exchanges between the parties , see below). In return, the parties will have to be reactive, as the deadlines for submissions to the INPI are very short and non-extendable.

Interest in acting (R.716-2) – Before the INPI, “any natural or legal person” may file an application for revocation or invalidity on the basis of an absolute ground, without having to justify an interest in acting, whereas previously, before the courts, the parties had to justify such an interest, sometimes strictly assessed. Other claims, whether brought before the INPI or a judge, still require the justification of an interest to act.

In practice…

This specificity will influence litigation strategies. It is an advantage for the plaintiffs, who have hitherto been subject to the judge’s fluctuating interpretation of the interest to act in revocation or invalidity on absolute grounds. On the other hand, the legal certainty of trade mark owners will be weakened: nothing now prevents a company from attacking a competitor’s trade mark, while remaining under cover (for example, by having an application for invalidity or revocation filed in the name of a law firm).

Conduct of the proceeding (R. 716-1, to R. 716-8) – The application for revocation or invalidity, filed via the INPI’s electronic portal, is examined within a strict time frame, consisting of three phases. During the last two phases, the parties may request a stay of the proceeding, up to a maximum of 12 months, in order to settle the dispute amicably.

• Admissibility examination phase

During this first phase, the INPI examines the admissibility of the application and invites the applicant to complete the missing elements if necessary, in particular a brief for each ground invoked (except in revocation claims for non-use, where no brief is required). To be noted: an application based on several grounds is admissible if the INPI is able to examine at least one of the grounds; in this case, it rules only on the admissible ground.

• Instruction phase

This adversarial phase allows for up to 3 written exchanges between the parties. With the exception of the first response period granted to the owner of the contested trademark, which is 2 months, each response time is 1 month non-extendable. A public hearing may be held at the end of this phase, at the request of the parties or the INPI; the latter may invite the parties to focus their comments on certain issues (no new means, nor new pieces, can be submitted).

• Decision phase

At the end of this last phase, lasting 3 months, the Inpi renders its decision, both on the admissibility and on the merits of the application. This decision is an enforceable title. In the absence of an express decision, the application is “deemed rejected” according to a mechanism that has been in place for a few years before the administrations: if the parties wish to challenge this rejection in the Court of Appeal, they will then have to ask the INPI to provide them with written reasons.

Cost of the procedure and distribution of costs (art. L.716-1-1 and R.411-17) – The procedure is subject to a fee of EUR 600, plus, in the case of an application for a declaration of invalidity for infringement of earlier rights, EUR 150 per additional right invoked. At the request of the winning party, the INPI may order the losing party to pay a lump sum for the costs of the proceedings, according to a scale set by decree (which has not been published to date). If the action is only partially successful, each party bears its own costs.

Means of defence (Articles L.716-2-3 and L.716-2-4) – The texts list the defences to an application for nullity, which may be raised both before the INPI and before a court. 
Under penalty of inadmissibility, the plaintiff acting on the basis of a prior trademark may thus be required to provide evidence:
– of the genuine use of its earlier trademark registered for more than five years (possibly over two cumulative periods, see our Newsletter of February 12, 2020), 
– of its distinctive character acquired through use on the filing date of the later mark, if the defendant claims that it would be liable to be declared invalid on the ground of non-distinctive, descriptive or usual character on the date of its own filing; 
– its sufficiently distinctive character to justify the existence of a likelihood of confusion with the later mark subsequent to the date of filing;
– its reputation, where the application is based on the detriment to the distinctive character or reputation of a reputed trade mark.

Before the INPI, a defendant who wishes to counterclaim the invalidity or revocation of the earlier trademark may do so, but by filing a new action. On the other hand, a defendant who wishes to counterclaim by challenging the validity of the company name, trade name or domain name opposed to it, in the field of unfair competition, will have to bring the matter before a court, since the INPI is not competent to rule on these matters.

In practice…

It is therefore in the interest of the applicant in an action for invalidity or revocation to prepare the action carefully before seizing the INPI, especially since all the prior rights and means invoked must be specified in the initial application; the applicant then has the possibility of reducing the basis or scope of the action, but not of extending it. It will also be prudent to anticipate the counterclaims that will be raised in defence, by first gathering evidence in support of the genuine use, the acquisition of distinctiveness through use, or the reputation of the trademark. This is all the more important since, in addition to the defence, the owner of the contested mark will be able to reply easily by filing an application for revocation of the mark opposed to him, by a simple formality which does not even require the provision of brief.

If the jurisdiction of the court is sought, it will then be necessary to file, in addition to the application for invalidity or revocation, applications relating to the infringement or, in addition, to oppose a prior right falling within its jurisdiction (copyright, designs or models, personality rights).

Articulation between procedures (art. R.716-13 and R.716-14) – A claim before the INPI or a court is inadmissible when a decision has already been handed down between the same parties with the same status, concerning the same subject matter and the same cause, and is no longer subject to appeal: just as a judgment has the force of res judicata, the decision handed down by the INPI has the force of the “decided thing”, according to the formula enshrined in administrative acts.

In practice…

Such inadmissibility is, however, theoretical in the case of an application for revocation. Indeed, any new application for revocation necessarily relates to a different subject matter from the previous one, since the period of alleged non-use or degeneration, which is counted from the date of the application, differs.

A court hearing a counterclaim for invalidity or revocation while a claim is pending, between the same parties and for the same facts before the INPI, may stay the proceedings pending the INPI’s decision. The administrative procedure may, for its part, be suspended by the INPI in the event of an action likely to affect the validity, maintenance or ownership of the prior right invoked. If the procedure is based on several prior rights and only one of them is the subject of such a request, then the entire procedure is suspended.

2. THE REFORM OF APPEALS AGAINST INPI DECISIONS

While the decision of a judge of first instance is traditionally subject to appeal, the decision of the INPI is subject to “recourse”, also before the Court of Appeal, but in a different procedure. Until now, this recourse has been an administrative one for annulment, without devolutive or suspensive effect, submitted by exception to the judicial judge. 

This recourse had the particularity of being only marginally subject to the rules of civil procedure. Its procedure was regulated a minima by the Intellectual Property Code, which had generated abundant, and sometimes erratic, case law on its regime. Finally, it was subject to strict admissibility conditions, in particular with regard to certain mandatory and non-regularisable information, which resulted in a very high inadmissibility rate.

Creation of a dichotomous recourse system – This “traditional” recourse for annulment subsists against INPI’s decisions ruling on the grant, rejection or maintenance of an industrial property title – while being reworked in its terms and conditions. On the other hand, the lawmaker has introduced a new type of full litigation recourse against INPI’s decisions on patent opposition or trademark cancellation and revocation.

The main features of this appeal can be summarized as follows:

Rules common to all recourses (art. R.411-20 to R.411-37)

• Recourses are brought before the Court of Appeal in the jurisdiction of which the applicant is domiciled (or before the Paris Court of Appeal for foreign residents).
• Representation by a barrister is mandatory
• The parties have 1 month to lodge a recourse from the notification of the decision, increased by 1 or 2 months if they reside overseas or abroad. Warning: in the (theoretical) event of an implicit rejection decision, the parties shall request communication of the reasons to the INPI within this time limit; they then have 2 months to appeal to the court upon receipt of the said reasons.
• The appeal is filed electronically (idem for notices, warnings and subsequent summons).
• Mandatory information on the appeal is required on pain of nullity, and not anymore of inadmissibility pronounced ex officio.
• Incidental recourses, voluntary or forced intervention are now possible.
• The parties have 3 months to send their brief, containing “all of their claims on the merits” (previously, the appellant had one month to produce them, the time limit for the appellant to do so varied from one court to another).
• The INPI is not a party to the appeal, but it may submit its observations.
• The intervention of the Public Prosecutor is optional (it was previously mandatory).
• The parties and the INPI may appeal to the Supreme Court (Cour de Cassation) against the judgment ruling on the appeal. 

Specific rules in recourses against decisions of the INPI ruling on cancellation or revocation of trademarks and opposition against patents

• The recourse has suspensive effect
• The action is devolutive: the parties may submit new grounds, documents and evidence, including on a different legal basis, as long as they support the same claims as those made before the INPI, i.e. they “seek the same ends”; they may also submit new claims to the court “to allow the issues arising from the intervention of a third party or from the occurrence or disclosure of a fact to be judged”.
• The court may overturn the decision of the INPI.

Specific rules in recourses against decisions of the INPI ruling on issuance, rejection of maintenance of a trademark, patent or design

• The recourse has no suspensive effect.
• The recourse is for illegality: the court can only ensure that the INPI has not made an illegal decision. It rules under the same conditions as the INPI, and therefore cannot examine pleas, documents and evidence on which the INPI has not had the opportunity to rule.
• The court may only annul the INPI’s decision and refer the matter back to the INPI, which shall rule anew.

In practice…

This reform broadens the parties’ room for manoeuvre in the context of an appeal against an INPI decision. A party who has applied before the INPI for the invalidity of a trademark for descriptive character may therefore raise before the Court of Appeals a new ground in support of the invalidity, based for example on the misleading character, or a relative ground. On the other hand, it will not be able to apply for revocation, which is a new claim.

A party who has filed an opposition against a patent before the INPI for lack of novelty may likewise raise before the Court of Appeal a lack of inventive step or any other ground for revocation, and produce new documents, such as new prior art. The patentee will be able to submit new subsidiary requests to the court.

It is questionable whether the INPI, whose observations before the Court of Appeal have so far been intended to clarify its decision, will present observations on the new grounds and documents that it will not have had to deal with during the administrative phase. This is not specified in the texts.

Finally, the suspensive nature of the appeal against a decision of INPI will be an aspect to be taken into account in the development of the litigation strategy. Indeed, in other legal proceedings before the Courts, the non-suspensive nature of the appeal against a decision of first instance has recently become the rule since the Reform of the Justice System. 

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