Third-party observations

Third-party observations are the written remarks that any interested person may send to the office during the registration procedure of a trade mark, in order to point out a ground that would preclude registration of the sign. Under French law, they are provided for in Article L. 712-3 of the French Intellectual Property Code and must be submitted to INPI within two months following publication of the application. For the EU trade mark, Article 45 of Regulation (EU) 2017/1001 governs them before the EUIPO. They differ from opposition in that they confer no standing as a party.

Subject matter of the observations

Observations concern the absolute grounds for refusal, that is, the reasons why the sign could not, in itself, constitute a trade mark for the goods and services designated, for instance its descriptiveness, its customary character, its deceptive nature, its conflict with public policy or its functional character. They enable a competitor, a trade association or a body defending a geographical indication to draw the examiner’s attention to facts of which the examiner is not necessarily aware, such as the common use of the term in the sector or its meaning in a foreign language.

Procedural regime

The author of the observations does not become a party to the proceedings. The office forwards them to the applicant, who may respond, but the office is not bound to act on them or to give specific reasons in respect of them, and the author has no remedy against the registration decision. Before the EUIPO, they may be filed until the end of the opposition period or, where an opposition has been filed, until the final decision on it, and the office may reopen examination of the absolute grounds in their light. The opposition procedure, based on an earlier right, is therefore the only route that guarantees the third party an inter partes hearing and a reasoned decision open to appeal.

Strategic interest

Observations are an inexpensive means of trying to remove a troublesome sign without commencing proceedings, in particular where the third party has no earlier right to rely on but has an interest in keeping a term needed in trade available. Their effectiveness depends entirely on the quality of the material produced, and they do not prevent the third party from later bringing an invalidity action before INPI or before the court if the trade mark is registered. They nonetheless carry a tactical risk, since they reveal the third party’s interest to the applicant and give the applicant the opportunity to prepare its defence or to restrict its specification before any litigation.

Key points

Third-party observations allow anyone to point out to the office, within two months of publication in France, an absolute ground for refusal, without becoming a party to the proceedings and without any remedy against the decision. They replace neither opposition, which is reserved for owners of earlier rights, nor the invalidity action. Reserve them for cases where the facts are solid, and weigh the value of disclosing one’s position to the applicant before any possible action.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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