August 1, 2015
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FRANCE: Trademark Application and Renewal: Silence from INPI Equals Rejection
The recent French law enabling the government to streamline relations between public administration and the public (loi n° 2013-1005 du 12 novembre 2013, habilitant le gouvernement à simplifier les relations entre l’administration et les citoyens) amended article 21 of the law on the rights of the public in its relations with public administration (loi n° 2000-321 du 12 avril 2000 relative aux droits des citoyens dans leurs relations avec l’administration), to the effect that the lack of reply of any government agency amounts to acceptance of the request made to such agency. However, the 2013 law authorized the government to provide for exceptions to this principle. The decree (décret n° 2014-1280) of October 23, 2014, thus provided that for certain decisions regarding industrial property titles (in particular applications for trademark registration and renewal as well as oppositions) the lack of reply of the administration is tantamount to rejection. This decree raised some uncertainties as to its enforcement and compliance with the provisions of the Code de la propriété intellectuelle (CPI). Fortunately, a decree (décret n° 2015-511 du 7 mai 2015) modifying the CPI has addressed these uncertainties.
Regarding the registration of trademarks, the new articles R. 712-23-1 and R.* 712-23-2 of the CPI provide that lack of response by the National Institute of Intellectual property (INPI) to trademark registration requests implies a decision of rejection at the end of a six-month period starting from the request, which may be interrupted in the case of an opposition or notification of irregularity. Until now, INPI had to decide upon substantive objections within four months (R. 712-11 CPI), which remains unchanged. INPI is now also subject to a deadline of six months for the establishment of a formal objection—the office must either register the trademark or issue a formal objection before this deadline. If not, the trademark would be considered as rejected.
It would appear that receipt of the certificate is required to validate the application. As for INPI’s implied decisions of rejection, they do not need to be substantiated. In order to find out why the request was rejected, applicants will have to refer the matter to a judge who will order INPI to render a decision. This should not be a problem as INPI is expected to render a decision before the six-month deadline to formulate objections. These objections will interrupt the six-month period, at the end of which INPI’s silence would imply rejection.
Unfortunately, the reform has brought no modifications regarding the rest of the procedure. In fact, INPI is not subject to any deadline when deciding responses to an applicant’s objection. At present, INPI’s response times often exceed two years.
Regarding trademark renewal requests, the decree inserts, after article R. 712-24 CPI, articles R. 712-24-1 and R.* 712-24-2, which provide that INPI’s lack of response to trademark renewal requests implies a decision of rejection at the end of a six-month period starting from the renewal request, which can be interrupted in the case of a notification of irregularity.
As a result, the strategy of trademark owners and trademark attorneys regarding applications and renewals of trademarks should be modified, and the receipt of application and renewal certificates should be systematically checked before the six-month deadline. The Decree of May 7, 2015, entered into force on May 9, 2015, is applicable to prior requests that have not yet been subject to any express decision. Great care is thus recommended regarding trademark registration and renewal requests.
While this reform helps accelerate procedures, its disadvantage is that it increases the amount of time required to properly manage each trademark.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2015 International Trademark Association