The INPI has exclusive jurisdiction (Art. L716-5 I) to hear requests, made primarily, forfeiture of a French trademark
- for non-use (Art. L714-5) or
- for degeneration or for having become misleading (Art. 714-6) or
- in the case of a guarantee mark, for the reasons of Art. 715-5 and, in the case of a collective mark, for the reasons of Art. 715-10.
The regional courts, determined by regulation, have exclusive jurisdiction (Art. L716-5 II) to hear
- requests for revocation made as a counterclaim or when probative, provisional or protective measures have been ordered or are being executed; and
- requests for revocation whatever the reason in the event of a request related to another action within the jurisdiction of the court, such as an action for unfair competition.
The procedure before the INPI is contradictory (Art. R716-3) and open to all without having to justify an interest in acting (Art. L716-3). Before the courts, the request is made by any interested person (Art. L716-3).
Submission of forfeiture request
The request for revocation includes (Art. R716-1):
- the identity of the applicant;
- where appropriate, the particulars to establish the existence, nature, origin and scope of the prior rights invoked;
- the references of the contested brand as well as the indication of the products or services targeted by the revocation request;
- the statement of the means on which the request for revocation is based, with the exception of a request for revocation for non-use, the proof of the exploitation incumbent on the owner of the mark whose revocation is requested (Art. L716 -3-1); and
- proof of payment of the prescribed fee.
Instruction of the procedure (Art. R716-16)
- the request is notified to the holder of the contested mark (TMC), who has 2 months to present written comments in response and, if necessary, produce any documents he considers useful; for requests for revocation for non-use, the documents produced by the TMC must establish that the contested mark has been the subject of serious use during the 5 years preceding the request for revocation;
- in the event of a response, the applicant has a period of 1 month to submit written comments in reply and produce any documents which he considers useful;
- in the event of a reply from the applicant, the TMC again has 1 month to present new observations or produce new documents; in the case of a request for revocation for non-use, the TMC has the same period even in the absence of observations in reply from the applicant; in the event of a response, the applicant has a new period of 1 month to present his last written observations or to produce new documents;
- in the event of a reply by the applicant, the TMC has a final period of 1 month to present its last written observations or produce new documents, without being able to invoke new pleas or produce new evidence of use.
Within the framework of the presentation of its written observations, each party may request to present oral observations. The Director General of INPI may also invite the parties to submit oral observations. The oral procedure then takes place at the end of the written phase of the investigation.
At any time, the applicant forfeiture may limit the scope of his request to certain products or services concerned (Art. R716-7 2 °).
The investigation phase may be suspended at the joint request of the parties for a period of 4 months, renewable twice.
The INPI has 3 months to decide from the end of the investigation phase. The loser can be condemned to the payment of a fixed compensation (Art. L716-1-1).
The revocation takes effect on the date of the request or on the request of a party, on the date on which a reason for revocation occurred. It has an absolute effect.
The decision is subject to appeal for review before a competent Court of Appeal.
Serious use started or required after the 5 year period of Art. 714-5
This use does not preclude forfeiture if it has started or resumed within 3 months preceding the request for revocation and after the holder has learned that the request for revocation could be presented.