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Opposition of a French trademark application or French part of international trademark application

By entering an opposition within a period of 2 months following publication of the application for registration, the owner of an earlier mark can prevent a third person from registering a mark that infringes its rights.

This is a rapid procedure (the French Office has to take a decision in 6 months) and it is cheap with regard to an infringement trial.

However, before entering an opposition, one has to know about the risk.

In case of an opposition procedure based on a mark filed more than 5 years ago, the applicant may, in its first answer, ask to the opponent for use evidence, in order to establish if he is liable to revocation of his rights for non genuine use of the mark during an uninterrupted period of 5 years. If the opponent cannot provide such evidence within the time allowed by the French Office, opposition is rejected.

An opposition procedure can be suspended in the event of engagement, by the titular or a third, of an action for invalidity (for example the opposed mark can be considered as being descriptive), for revocation (not use, mark become the common name in trade...) ...

In each case, before entering an opposition, one has to define the "adversary", to know the company, the group to which this company may belong, the licences (recorded in the National Register of Marks), the similar marks that could be claimed (directly or not).

For example :

- the applicant may own a similar mark, which is prior to the opposed one ;

- the applicant can be "linked" to the owner of an earlier similar mark (by way of licence, by owning a company, by recording a natural person as the owner...).

Before filing the mark application, have complete prior searches been done ?If not, an identical or similitude search has to be conducted.

Therefore, before entering an opposition to an application for registration of a mark, it is very important to evaluate the applicant grounds of defence.

The opposition procedure is optional. If an action for infringement is sued ulteriorly, it will not be reproached the owner for not having used this possiblity.

Contrary to an opposition procedure, it is possible, with an infringement action, to put forward more than one mark, other prior rights (as a company name).

An opposition procedure can be doubled with a nullity and/or infringement action.This procedure, longer than the opposition, eventually allows to obtain :

- damages (the mere filing of a mark is an infringement act),

- measures of decision publication,

- more constraining measures of interdiction.