Intellectual Property Code amended


Decree 2008-1301, which was published on December 12 2008, has slightly modified certain provisions of the French Intellectual Property Code with respect to patents and trademarks.

The decree was adopted pursuant to Article 134 of the Law on the Modernization of the Economy (2008-776). 

Although opposition procedures may still be suspended for up to six months, the decree provides that an applicant may now request a suspension for an initial period of three months, renewable for one additional three-month period. Previously, the parties were free to determine the length of the suspension, provided that it did not exceed six months.

The decree also slightly modifies the wording of the provision on the suspension of opposition proceedings in cases where the mark on which the opposition is based is the subject of cancellation proceedings. Under a strict interpretation of the former text, opposition proceedings could not be suspended if the cancellation request was brought as a counterclaim (as opposed to a direct action). The new language makes it clear that opposition proceedings may be suspended in both cases.

Further, the decree adds a new provision to the code, Article L714-8, which provides protection for the Red Crystal emblem in compliance with the Protocol Additional to the Geneva Conventions of August 12 1949 and Relating to the Adoption of an Additional Distinctive Emblem (Protocol III).

Finally, the wording of Article L713-5 of the code - which concerns the protection of trademarks with a reputation - has been clarified. While the former version of the article referred only to the "use" of a famous trademark, the new version refers to the "reproduction or imitation” of such a mark. This widens the scope of Article L713-5, in line with the July 12 2005 decision of the Cour de Cassation in the Pedimust Case (Case 1086/2005). 

Karina Dimidjian-Lecomte, Casalonga Avocats, Paris

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