IP Code amendments facilitate oppositions and renewals

Directive 2004-199, which modifies the French Intellectual Property (IP) Code, has come into force. The directive includes important procedural changes, which are summarized below:

• The opposition procedure is amended as follows:

  o Where a mark that forms the basis of an opposition has been registered for more than five years, its owner must provide evidence of use for at least one of the goods or services on which the opposition is based (Article R 712-17). The Trademark Office (TO) previously accepted evidence of use of the mark for any goods or services, regardless of whether they served as the basis of the opposition.

  o The parties to an opposition procedure no longer have to send separate requests to the TO to terminate the proceedings: the opponent may terminate them on its sole initiative (Article R 712-18).

o If the applicant appeals the TO's opposition decision before the Court of Appeals, the opponent will be called as a party to the action (Article R 411-24). Previously, the opponent was not even informed of the action, which was considered to involve only the applicant and the TO.

• While the IP Code did not specify from what date a trademark may be considered registered, the amended Article R 712-23 now states that the date of publication of the notice of registration in the Official Bulletin counts as the first date of registration of a French trademark. This is particularly important for calculating when the five-year period for the obligation of use starts. It is in line with the case law on that matter.
  
  
• Pursuant to new Articles R 712-27 and 712-28, applicants may now divide their applications. Therefore, if a trademark is filed in Classes 9, 16 and 28, but is only opposed in Class 9, the applicant may request that the application be divided into one application covering Class 9 and another covering Classes 16 and 28. Both applications will benefit from the original filing date. This will enable the second application to proceed to registration.
  
  
• Some of the most significant amendments concern the renewal procedure:

  o A registration no longer has to be renewed by the tenth anniversary of the application filing date. Instead, it should be renewed by the last date of the month during which it was filed. Thus, an application filed on August 15 1994 should be renewed by August 31 2004.

  o A six-month grace period for renewal has been reintroduced. This means that mark owners may apply for an extension of the renewal period for another six months after the end of the official renewal period. Thus, a mark applied for on August 15 1994, due for renewal by August 31 2004, need not be renewed until March 1 2005 if its owner pays a €115 fee.

o Owners of marks due for renewal before the new directive came into force (ie, March 3) may benefit from this six-month grace period if the initial renewal period expired less than six months before the directive came into force. Thus, the owner of a mark due for renewal on September 2 may not benefit from the six-month grace period, while the owner of a mark due for renewal on September 5 may.

• A party wishing to record changes to the ownership of a trademark, such as assignments or mergers, is no longer required to submit the original document evidencing such change. This will make it much easier to record changes of ownership for which original documents no longer exist and for which it is difficult, burdensome or not possible to obtain a certified copy.

Karina Dimidjian-Lecomte, Bureau DA Casalonga-Josse, Paris