In the following article, in association with SMD Country Index, Charlotte Urman, deals with the current meaning of silence.
The old adage that “silence equals consent” is widely applicable in French Law, in particular for adminstrative purposes. Indeed, usually (even if so many exceptions exist) in case the French Administration does not reply to a request within a specific timing, the latter is deemed accepted. The prima facie target is to avoid length of proceeding, just because the Administration has not been able to give a quick positive reply.
This was also the case for the Frenck trademark Administration (INPI), until the last decree n°2015-511 dated May 7, 2015. Anyway, for the sake of administrative simplification, President Hollande’s Government has chosen to amend the rule, notably regarding trademarks proceedings before INPI : From now, silence means refusal!
What are the consequences in practice?
- Regarding trademark registrations proceedings
Article. R712-23-1 states that a decision is given regarding an application for TM registration within 6 months and that in case no express decision is given the application is deemed rejected.
Previsoulsy, when an applicant did not receive any refusal notification from INPI regarding its trademark request within this timing of 6 months, his trademark supposed to be accepted for registration. On the contrary, in the same situation, now the TM application will be considered as refused.
It can be good news since in case INPI wants to object the TM application this should be done and the applicant should be notified within this 6 months schedule. Nevertheless, in practice, the worth possibility and risk is that INPI does not object, let the 6 months timing lapse, so that the TM aplication is automatically rejected.
Besides, this Article also states that this 6 months deadline is “interrupted” in case of opposition or in case of provisionnal refusal. This has no real impact in case of opposition because INPI is already obliged to rule on the opposition proceeding within another deadline of 6 months (in case no decision is given within 6 months, except suspension of proceeding, the opposition is deemed refused).
On the other way, the situation remains unclear in case INPI send a provisionnal refusal to the applicant, whether the wording “interrupted” means that the deadline disappears or that the deadline is suspended.
Indeed, in case the deadline disappears, the final decision of INPI further a provisionnal refusal is not framed in this 6 months timing and, so, could be rendered many months or years later. Of course this means that the registration will be pending and this is not secure on a legal point of view for the applicant.
On the contrary, in case the deadline is only suspended until the reply of the applicant to the objection, this would mean that the later INPI notifies the applicant of a provisionnal refusal (if the wording of the specification is unclear for instance) the minor INPI will have time to give a decision … with a higher risk to never receive a decision, so to have a silencious refusal. Consequently, the fact that INPI is not obliged to notify a provisionnal refusal for formal grounds makes the proceeding more risky for the applicant (INPI is obliged to notify the applicant within a deadline of 4 months for lack of distinctiveness or misleading trademark, so INPI will have more time to rule on these points).
- Regarding trademark renewal proceedings
Articles R712-24-1 & 2 state that a decision is given regarding a TM renewal request within 6 months and that in case no express decision is given the renewal is deemed rejected.
Usually, it is quite rare to receive objections to TM renewal but in any case this stipulation brings a higher burden to the trademark owner and its representatives. Indeed, it will be most important to avoid any formal mistake and the same question as for registration process also exists regarding the timeline given in case of objection and whether the 6 months deadline disappears or is just postponed.
Moreover, a particular caution should be taken regarding the update of the trademark information record, and it is advisable, in case the renewal deadline is approaching to ask for recordal of transfer, if any, using the accelerated proceeding (with further official taxes) that may secure the renewal process.
How does it work in case of silence?
Either in case of registration or in case of renewal, this new principle related to trademarks proceedings, stipulating that silence means refusal, conducts to a relative uncertainty.
Indeed, a fortiori, in case no decision is rendered with consequently a negative effect, the trademark applicant/owner who sees its request refused does not know the nature of the grounds of refusal.
Nevetheless, it is possible to contest, by the way of an appeal before Courts, the implicit refusal decision of INPI. This will have to be done within one month from the decision (3 months for a foreign applicant/owner), i-e after the 6 months period has expired. It is to be noted that even if it is possible to request from INPI an official notification of its implicit decision, this notification will not be argued.
The difficulty and insecurity of disputing a decision without knowing the arguments to contest is easily understandable…
Prudence is, more than ever, advised when managing a TM portfolio
TM applicants and owners, as well as their Intellectual Property Attorneys, find their burden heavier than before and need to be more cautious again when managing their IP rights.
They have to monitor new deadlines, watch more carefully the process of registration / renewal, anticipate the absence of reaction of the Administration, do in advance any necessary recordal.
No doubt that this bring a new pressure to reform the processes of management for French trademarks.
If you need any further information, please feel free to contact your dedicated team.