December 18, 2019

France updates its trademark legislation and fee schedule

As of December 11, 2019, provisions of the Law on Business Growth and Transformation regarding trademarks entered into force in France. The law is also known as PACTE (Plan d'Action pour la Croissance et la Transformation des Entreprises), and it is an action plan for France’s economic transformation in general including multiple provisions affecting the French IP law. In addition, the EU Directive 2015/2436 is also set to be implemented through the above provisions.

The law has been gradually imposed through numerous decrees, each introducing only some of the amendments. If summarized, the changes are as following: new trademark types as well as collective trademarks have been permitted for registration, renewal and opposition procedures have been improved. The amended articles governing nullity procedures for trademarks as well as opposition and examination procedures for patents will enter into force as of April, 2020, with final enforcement of all PACTE provisions regarding IP taking place by 2021.

As for the new brand types, France follows the same route as other European countries in that it defines a trademark as “any sign capable of being represented in the trademark register in clear, precise, distinct, easily accessible, intelligible, durable and objective manner”, which eliminates the previously necessary graphic representation requirement and allows for registration of sound, motion, multimedia and holographic brands.

Moreover, changes introduced to the trademark renewal procedure also contribute to the simplification of the trademark system in France. Previously, renewal requests should have been filed during the last six months of the trademark validity. From now on, the term for making such requests constitutes one year immediately preceding the expiration date of the registration. Besides, the National Institute of Industrial Property (INPI) will notify a trademark holder about the expiration of the registration six months before the end of the trademark term at the latest. However, absence of the notification does not reverse the expiration; it is still the trademark owner’s responsibility to pay the fee on time.

The fee structure has also been amended to comply with the EU Directive 2015/2436. The filing fee for trademarks applied for before December 11 constituted EUR 210 for applications containing up to three classes and EUR 42 for each extra class. The updated fee schedule charges filing fees on the per class basis, so trademark applications covering one class cost EUR 190, while each additional class will require payment of EUR 40.

Renewal fees have also been amended in the same manner, with the basic renewal fee being EUR 290 per class instead of EUR 250 for up to three classes, the fee for each additional class has changed from EUR 41 to EUR 40.

The IP objectives of the PACTE law have partially coincided with the aims of the EU Directive and have found proper embodiment in the above amendments that should alleviate most of the issues applicants had to face previously, such as inability to file unconventional trademarks (now they can simply be filed in MP3 or MP4 formats); possibility to initiate nullity and revocation procedures before the INPI instead of the French Court (as of April 1, 2020) and to base their oppositions on multiple prior rights to different IP types (not only trademarks but also company and domain names).

Author: Lynda Miller