The much awaited (and often unknown) law of June 17, 2008 has set new rules as regards civil prescription, especially by reducing the limitation of action from 30 years to 5 years.
As applied to new Title XX of the French Civil Code, this law establishes new important rules that apply to intellectual property and more specifically to trademark rights.
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New article 2224 of the French Civil Code provides that “personal or movable property actions can be taken in periods of five years from the day the owner of a right becomes or should have become aware of the facts allowing him to exercise them ».
However, the law only concerns cases where no particular prescription period has been established. As a matter of fact, the new article 2223 of the civil Code states that the other provisions of Title XX are no obstacles to the application of the specific rules provided under other laws.
As regards trademark rights, the prescription period for an infringement action, as set out in article L 716-5 of the French Intellectual Property Code, remains of 3 years.
Considering the foregoing, to what actions can this new prescription period apply?
Article L 714-3 of the Intellectual Property Code – that states the conditions of a trademark cancellation action – does not provide for any limitation of such action in time. In fact, it is only stated that the cancellation action will be rejected if the mark has been registered in good faith and the holder of a prior right has acquiesced to its use for a period of five years.
Failing any specific provisions on trademark cancellation actions, the ordinary prescription period of 30 years provided under civil law could still apply.
It is this particular period that is now modified by the new law. From now on, the holder of a prior right can only ask for cancellation of a registered trademark within the five-year period prescribed by civil law.
However, this prescription period only applies to cancellation actions initiated on principal grounds, and obviously not to counterclaim actions taken by the owner of a right accused of infringement, for example.
In the latter case, the cancellation action can be taken at any time during the trademark infringement action, without any prescription in time.
As regards the application of this law, four points deserve to be examined in further details:
– – Knowledge of the facts
An advantage of the new provisions is that the same prescription period is provided for both the cancellation action and foreclosure by tolerance of use. In both cases, it is a five years period, starting » from the day the owner of a right became or should have become aware of the facts allowing him exercise it”, in the first case, and « from the day the owner became aware of the actual use », in the case of foreclosure.
Nonetheless, the scope of the two notions remains equally difficult to determine. How could a judge know exactly when the owner of a right “should have become aware of the facts or the start of actual use »? These notions will have to be determined by precedents.
– – Interruption of the prescription period
How can the prescription period be interrupted? Writ comes first. The new provisions of the Civil Code even state that it is not necessary that the claim be filed within the right jurisdiction, and that an action, even before a non competent judge, will interrupt the period. The same rule applies to summons with a technical irregularity.
Prescription can also be interrupted by a deed of forced execution (writ or seizure). In that case, the law does not mention whether these deeds can interrupt the prescription period, even in case of an irregularity in the form of proceedings.
– – Contractual prescription period
The Civil Code in its article 2254 § 1 provides that the prescription period can be reduced or extended with the parties’ agreement, but cannot be less than one year or more than ten years.
This case, however, could hardly apply to trademark cancellation actions.
– – Transitional right
When the new law reduces the duration of a prescription period, which is the case with the new provisions, the new period starts running from the day the new law becomes effective, and the total duration cannot exceed the duration prescribed by the prior law.