The trademark opposition procedure at French trademark office (INPI)
Specifics of the trademark opposition procedure at the French trademark office (INPI)
.avif)
If you have already registered a trademark, you have certainly already heard about the opposition procedure. However, are you aware of how it works?
The opposition procedure is open against all French trademark applications filed with the INPI, for a period of two months from the publication of the trademark in BOPI.
This opposition may be made on the basis of an earlier French, European Union or international trademark relating to France.
The opposition is subject to a cost of 325 euros, to be paid by the opponent during the opposition.
Once the opposition has been filed, the applicant of the contested trademark is informed of it and has a deadline to send his observations.
A draft decision is then sent to both parties, on which comments can be submitted within one month.
In the absence of comments submitted during the deadline, the draft decision becomes final. If observations have been submitted, the INPI may take them into account in order to amend its draft, but this is not guaranteed.
The INPI must take its decision within six months from the filing of the opposition.
It is then possible to appeal the decision to one of the ten Courts of Appeal competent in trademark matters, within one month from the notification of the INPI decision.
The opposition argument contains two parts: the comparison of goods and services, and the comparison of signs. An identity or similarity between brands within one of the parties can be offset by a strong difference within the other party.
The first consists of a comparison of the goods and services of the earlier trademark and the registered trademark.
Identical products or services should be identified.
The same is true for similar products or services, but in this case it will be appropriate to explain how the products or services are synonymous or complementary. It is also possible to compare goods or services of different classes insofar as they could reasonably be provided in a complementary manner.
A presentation in the form of tables is often chosen for the sake of clarity.
Once the products or services have been compared, it will be appropriate to compare the signs.
If the signs are identical in all respects, the comparison is simple as there is no evidence of any risk of confusion. It will then suffice to argue that the sign is identical visually, phonetically and conceptually.
If the signs are similar (a small difference justifying the qualification of similarity and not identity), it is necessary to demonstrate that the second sign creates a risk of confusion among the public.
It is then appropriate to compare brands on three levels:
It is also useful to research the INPI case law for similar oppositions, in order to find decisions that are favorable to you.
The structure is similar in defense. However, it will be necessary to take into account the opposing arguments in order to answer all the points raised.
This procedure is complex and may require the assistance of a legal professional. Do not hesitate to contact us.
What classes, and products/services should be included in a trademark for a mobile application?
The transfer clause in SaaS agremeent is a trap: a customer should not be able to prohibit an important operation for the SaaS company. How should it be drafted?
Let's build together to grow your business
I have been supporting software and SaaS companies for more than 10 years, to structure their business, protect their intellectual property and improve their contracts.
