Cabinet Sabatier
MODIFICATION OF THE RULES OF APPLICATION OF THE FRENCH CODE OF THE
INTELLECTUAL PROPERTY
The decree of February 25, 2004 has introduced the following
main modifications:
I – Marks
Official actions during the procedure of examination :
The project of decision of refusal issued by the French Trademark office is assimilated to a formal decision
by
refusal if it is not challenged (article R 712-11).
Oppositions
The documents submitted as proof of use must prove the exploitation of the previous mark for
at least one of the products or services on which the opposition
is founded or justify a good reason of the absence of exploitation (article R 712-17).
The procedure of opposition may be closed on the request of the
opponent if he withdraws the opposition (article R 712-18).
Appeal
In case of action for annulment before the Court of Appeal against a decision of the
Direction of the French Trademark office filed by the owner of the trademark
application subject to the opposition, the owner of the opposed trademark is implicated in
the suit (article R 411-24).
Certification collective trademark
The justification of the homologation of the rule of use is no more required
(article R 712-3).
Date of registration
A French trademark is considered as registered at the date of publication of the
registration at the Official Bulletin of Industrial Property.
For the international trademarks subjected to official action or
opposition, the date of registration in France is the date of inscription on the International Trademark Register
of the withdrawal of the total or partial refusal of the mark.
For the international trademark which have not been subject to
official action or opposition, the date of registration is four months after the notification at the French
rademark office by WIPO of the extension of the international trademark to France (article R
717-4), or if the expiration of the deadline to file opposition, if later,
this is last date (article R 712-23). The delay
of five years for cancellation for non-use is calculated from these dates.
Clerical mistakes
They may be corrected on written petition (article R 712-10).
Division of a trademark application
Up to the beginning of the technical preparatives of the registration or during the
procedure of appeal against a decision of registration of a mark, the applicant can file
divisional trademark applications. These have the benefit of the date of the initial
application (article R 712-22).
Renewal
The delay expires the last day of the month during which the protection of the mark ends.
A grace period of six months is open after the expiration of the
date of a renewal (as it was the case according the the old French law before 1992) in counterpart
of a supplementary tax. In case of no fillfulment of the delay of renewal, a petition for
release from cancellation is possible (article R 712-12).
As a transitional measure, the trademarks expired before the
coming in force of the grace period may be renewed in the new grace period if six months have not been expired.
Restitution of the application documents
The document of inaccepted or rejected trademark applications or non-renewed
trademark can be refunded on request of the applicant and at his expense during a delay
of one year (article 714-9).
II – Designs and models
An application per class is required (article R 512-3).
By exception, this rule is not applicable to ornementations.
The designs or the photographies of the application must be of a sufficient quality to make possible a good
official publication (article R 512-8).
Division
An application in part may be filed to overcome an official action (article R 512-9).
Duration of the protection
The maximum is 25 years, per period of five years. The first prorogation for the second period can be
requested at the expiration of the first period or at the time
of the filing of the design and model.
A prorogation come in force the day following the date of expiration of the design and model; it may be
submitted up to the last day of the month during which ends
the period of protection (article R 513-1).
A grace period of 6 months is instituted in counterpart of the paying of a supplemenetary tax.
The Design office cannot decide to reject an application before the applicant has been in position to submit
his observations.
Simplified application
The possibility to file a simplified application according to the special rules of a “simplified
applications", which gives a protection for only three years, is only opened
at the date of the application. There is no possibility of transformation of a normal application to a
simplified application (article R 512-4).
Restitution of the content of an application
The documents of a refused or cancelled or expired application can be returned on request of the applicant at
his own expenses during a delay of one year (article R 514-2).
III - Patents
The patent office is allowed to require receiving the
application via electronic media (article R 612-1).
Annuities
The grace period of six months to pay annual fees begins the day following the date of
payment of the tax.
Search report
The possibility to spread the payment of the search report tax is no more in force.
Seizures
The petition for authorisation of seizure of infringed products must be only filed before the President of one
of the ten First Instance Courts in charge of
patents matters (article R 615-1).
The President of the Court may decide, in consideration of the
official report of seizure, all complementary measures to complete the proof of the asserted infringement.
At the request of the defendor and on proof a justification, the
President of the Court may decide all measures to save the confidentiality of some documents (article R 615-4).
IV – National Register of Patents, Marks, Designs and models
It is no more compulsory to submit an original of the deeds to
record (articles R 612-15, R 613-56, R 714-4).
In case of transfer of ownership in accordance with a merger, or assignment, a copy of an extract from the
Trade Register is sufficient
(articles R 512-16, R 613-50, R 714-5).
The recordal of charge of trade names, rectification of mistakes is possible without submission of any
document, unless request of the French Office
(articles R 512-17, R 613-55, R 714-6).
A request to record an act is only possible by the owner of the industrial property right regularly mentioned
on the National Register. So it is necessary to
record all modifications (articles R 512-15, R 613-55, R 714-14).
V – Petition for restoration and release for forfeiture
The claimant must necessarily be the owner recorded at the
French Register for the involved industrial property right (articles R 512-12, R 613-50, R 712-12).
VI – Miscellaneous
After official publication of an industrial property application, third parties can have knowledge of the
content of the records, on payment of a tax. The Patent and
Trademark Office may request the proof of a sufficient interest by the petitioner. The personal data and
secrecy documents cannot be communicated
(articles R 512-10, R 714-8).
The judgments of the Court may be recorded only if they are final, without possibility of appeal (articles R
512-14, R 613-54).
The competences of the French Office have been precised by the new text.