Relative grounds for refusal

Relative grounds for refusal are the grounds that preclude the registration or the maintenance of a trade mark by reason of the existence of an earlier right belonging to a third party. They are listed in Article L. 711-3 of the French Intellectual Property Code, which transposes Article 5 of Directive (EU) 2015/2436, and, for the EU trade mark, in Article 8 of Regulation (EU) 2017/1001. Unlike the absolute grounds, they are not examined by the office of its own motion and may be relied on only by the owner of the earlier right.

Earlier rights

Article L. 711-3 IPC covers first the earlier trade mark, registered or applied for, including the well-known mark within the meaning of the Paris Convention, and the trade mark with a reputation, protected beyond the principle of speciality. It then covers the company name, trade name, shop sign and domain name whose scope is not merely local, where there is a likelihood of confusion, the geographical indication, copyright, designs, the personality rights of a third party, in particular that person’s surname, pseudonym or image, and the name, image or reputation of a local authority and the name of a public entity. A trade mark applied for by the owner’s agent or representative, in its own name and without authorisation, is also refused.

Conditions of infringement

For an earlier trade mark, infringement is established where the signs and the goods or services are identical, without any need to prove a likelihood of confusion, and, where they are similar, where there is a likelihood of confusion on the part of the public, including the likelihood of association. That likelihood is assessed globally, taking account of the interdependence between the similarity of the signs, that of the goods and services and the distinctiveness of the earlier mark. For a trade mark with a reputation, infringement requires a link between the signs and an unfair advantage taken of the reputation or detriment caused to it or to the distinctive character, without any likelihood of confusion. Copyright and designs require reproduction or imitation of the protected creation.

Means of challenge

The owner of the earlier right may file an opposition before INPI within two months of publication of the application, for most of the rights listed, with the exception of copyright, designs and personality rights. After registration, the owner may seek a declaration of invalidity of the trade mark before INPI or before the Judicial Court, which has exclusive jurisdiction where the claim is based on those latter rights or is connected with an infringement action. The action is inadmissible where the earlier trade mark has not been put to genuine use, and it is barred by acquiescence where use of the later trade mark has been knowingly tolerated for five years.

Key points

Relative grounds for refusal protect owners of earlier rights against the registration of a trade mark that would infringe them, most often subject to a likelihood of confusion. They are not examined by the office of its own motion and are exercised through opposition or an invalidity action, within time limits and subject to conditions of use that must be anticipated. Monitor publications, check availability before any filing and never allow five years of acquiescence to run.

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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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