Administrative invalidity and revocation proceedings before INPI

The administrative invalidity and revocation procedure is the route, available since 1 April 2020 following the transposition of Directive (EU) 2015/2436, by which any person may apply directly to INPI for a declaration of invalidity or revocation of a registered French trade mark. It is governed by Articles L. 716-1 et seq. of the French Intellectual Property Code, which confer exclusive jurisdiction over certain applications on the Director General of INPI, while Article L. 716-5 IPC allocates jurisdiction between the office and the judicial court.

The scope of INPI’s jurisdiction

INPI has sole jurisdiction over applications for revocation, whatever the ground, and over applications for invalidity based on an absolute ground or on certain earlier rights, in particular an earlier trade mark, a trade mark with a reputation, a company name, a trade name, a shop sign, a domain name, a geographical indication or the name of a local authority, where they are brought as a principal claim. The judicial court retains jurisdiction where invalidity is based on copyright, a design or a personality right, where the application is brought by way of counterclaim or in connection with an action for infringement, unfair competition or contractual liability, and where evidentiary, provisional or protective measures have been ordered. An application for invalidity on an absolute ground and an application for revocation are open to any person without any requirement of standing, whereas an application based on an earlier right is reserved to the holder of that right.

The course of the proceedings

The application is filed online, on payment of a fee, and must identify the contested trade mark, the goods concerned, the grounds relied on and, for a relative ground, the earlier right. INPI checks its admissibility, notifies it to the proprietor and then opens a written adversarial phase during which the parties exchange observations according to a timetable set by the office, with the possibility of an oral hearing. The proprietor may require proof of genuine use of the earlier trade mark relied on where it has been registered for more than five years. The Director General rules by a reasoned decision within a period laid down by the legislation from the close of the adversarial phase, silence amounting to rejection. The decision has the effects of a judgment and may be entered in the register.

Appeals and effects

The decision may be appealed before one of the designated courts of appeal, which rules on fact and law, within one month of its notification. Revocation takes effect on the date of the application, or on an earlier date on which the ground for revocation arose if the applicant so requests. Invalidity operates retroactively. INPI may order the losing party to contribute to the other party’s costs, within the limits of a scale.

Key points

Since 2020, invalidity and revocation of a French trade mark have been sought before INPI, through a written, quick and inexpensive procedure, except in the cases reserved to the judicial court, in particular where an infringement action is pending. The decision has the force of a judgment and is challenged before the court of appeal. Before applying to the office, check that the application is not connected with pending court proceedings, and prepare evidence of use of one’s own earlier trade marks.

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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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