An opposition may be filed against a trademark registration application - within two months of its publication - in the event of infringement of one of the following prior rights having effect in France (new opposable prior rights underlined below):
- an earlier mark (registered, registered, notorious 6 bis Union de Paris or under prior priority)
- an earlier mark enjoying a reputation (exception to the principle of specialty)
- a name or company name if there is a risk of confusion in the minds of the public;
- a trade name, a sign or a domain name, the scope of which is not only local, if there is a risk of confusion in the mind of the public (the Opponent must demonstrate a risk of confusion with regard to the activity)
- a registered geographical indication or a request for a geographical indication subject to the approval of its specifications and its subsequent registration (AOC / AOP / IGP / IG);
- the name, image or reputation of a local authority or a public establishment for inter-municipal cooperation;
- the name of a public entity, if there is a risk of confusion in the minds of the public.
An opposition may be made against a trademark filed by an agent or commercial representative of the holder without the latter's agreement (exception to the principle of territoriality).
It is now possible to invoke several prior rights provided that they belong to the same holder.
If the applicant requests proof of the use of the opposing mark or marks, the opponent whose invoked mark has been registered for more than 5 years must, within one month, prove serious use for each of the products and services invoked in each of these brands. Failing to provide the required proofs of use or to provide just cause for non-use, the INPI will exclude these products and services that have no serious use.
Before acting, the opponent must therefore ensure that he does not lend himself to an action for revocation of his mark for non-use.
He must also ensure that he does not lend himself to an action for nullity of his mark.
It is possible to start with a "formal" opposition, the opponent then having the option of completing the opposition within one month.
For formal opposition, the opponent must justify the scope of his opposition, indicate the prior rights he invokes and pay the fee. He completes his opposition with a statement of pleas, justification of prior rights and a copy of the contested request.
Then begins an investigation phase of approximately 6 months during which the parties exchange documents and observations, this phase being followed by a 3-month phase during which the INPI rules on the merits of the opposition and writes the final decision.
If the parties discuss to find an agreement, they submit a joint request to stay the procedure for a period of 4 months, renewable twice, ie a maximum period of 12 months.