Redlink News – French Trademark Office: Significant change in the INPI procedures.
Redlink offers a trademark portfolio management based costs transparency, systematic estimated fee proposal and advice for dieting useless or erratic TM applications and registrations. This aims at giving clients budget visibility and predictability and ensuring effective protection in a cost-killing mode.
In this context, we draw attention on sensitive evolutions in the procedures of the INPI.
The principle in relations between the administrative entities is: « The silence maintained for two months by the administrative authorities on an application is acceptance decisions » (Article 21 of Law No 2000-321 of 12 April 2000 ).
Exceptions to this principle can be created by decree, which is the case for certain decisions of the French National Institute of Intellectual Property (INPI) (see Decree No. 2014-1280 of 23 October 2014). Decree No 2015-511 of May 7, 2015).
Are now concerned applications for registration and extension of registration of a design, the waiver requests for limitation or revocation of a patent, registration or renewal of registration a trademark, patent applications and oppositions against an application for registration of a mark.
- CLARIFICATION REGARDING TRADEMARKS, DESIGNS AND MODELS:
As of November 9, 2015, applications for registration of trademarks and designs that have not resulted in notification by the INPI at the end of a period of six months from the date of their application shall be deemed dismissed. The applicant will then have one month from the implied rejection to appeal against this decision before the territorially competent Appeals Court.
For pending applications (including those prior to the publication of the Decree), the period of six months shall run from the enforcement date of the Decree (ie 9 May 2015) and will expire six months later on November 9, 2015.
This text implies the applicant’s utmost caution after filing the trademark application or drawings and models with INPI. This must indeed carefully monitor whether its application for registration resulted favorably and, if not, lodge appeal. Otherwise, the application will be definitively rejected.
Note that in case of objection by one-third or irregularity notified by the INPI, the period of 6 months is now interrupted.
Decree No 2015-511 of May 7, 2015 cancels the 4-month implicit rejection in case of issuance of a patent, provided for in Annex of Decree No. 2014-1280 of October 23, 2014.
This innovation is in line with Article L. 411-5 of the Code of intellectual property requires that the rejections made by the Director of the INPI on the occasion of the granting, rejecting or maintaining securities industrial property are justified and communicated to the applicant.