Earlier rights enforceable against a trade mark

Earlier rights are rights held by a third party which bar the registration of a later trade mark or allow it to be declared invalid. Article L. 711-3 of the French Intellectual Property Code has set out a non-exhaustive list of them since the transposition of Directive (EU) 2015/2436, and Regulation (EU) 2017/1001 lays down the equivalent for the EU trade mark. They constitute the relative grounds for refusal, which only their holder may invoke and which the office does not examine of its own motion.

Types of earlier rights

• an earlier identical or similar trade mark covering identical or similar goods or services, where this results in a likelihood of confusion, as well as trade marks with a reputation and well-known trade marks,
• a company name, trade name, shop sign or domain name of more than merely local significance, where there is a likelihood of confusion,
• an appellation of origin or a geographical indication,
• copyright, rights in a protected design and personality rights, in particular the rights to one’s name and image,
• the name, image or reputation of a local authority or of a public body for inter-municipal cooperation, as well as the name of a public entity.

Conditions for enforceability

The right relied on must predate the filing or priority date of the contested trade mark and have effect in France, or in the Union for an EU trade mark. Each category is subject to its own conditions, whether likelihood of confusion for distinctive signs, originality for copyright or actual harm for personality rights. The holder of an earlier right who has knowingly acquiesced, for five years, in the use of the later registered trade mark loses the right to seek a declaration of invalidity, unless the applicant acted in bad faith, through limitation in consequence of acquiescence.

Means of challenge

Most earlier rights may found an opposition before INPI within two months of publication of the application, or an administrative invalidity action before the same office. Claims based on copyright, a design or a personality right, by contrast, fall within the jurisdiction of the Judicial Court (tribunal judiciaire). Since the 2019 reform, the invalidity action has not been subject to any limitation period, limitation through acquiescence remaining the main time constraint.

Key points

A trade mark may be defeated by a wide variety of earlier rights, well beyond trade marks alone. These rights must be invoked by their holder, in the proper form and before the competent authority. Before any filing, a clearance search should also cover company names, domain names and geographical names. The holder of an earlier right who discovers a troublesome trade mark must act without delay, as prolonged acquiescence may deprive it of any 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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