INPI, the French IP office, has published analysis of the first five years of administrative invalidity and revocation procedures in France.

The administrative procedures became available on 1 April 2020. The first applications came in straightaway and the first two decisions on the merits were published on 5 November 2020.

Fiver years on there have been almost 2,200 applications (an average of 440 each year) and more than 1,800 decisions (400 a year). About 60% of cases are invalidity applications and 40% revocation applications.

Microenterprises and SMEs have filed more than 35% of applications, closely followed by foreign companies. The most frequent targets of proceedings have been microenterprises and SMEs (38%) and private individuals (37%).

IP professionals assist applicants in just over 90% of cases: 51% of cases involve a lawyer, 41% an IP attorney and 7% no representative.

In “nearly 15” decisions, INPI has held that it does not have jurisdiction because of a pre-existing court dispute. Twice it has found an abuse of process by the applicant.

The majority of invalidity applications are based on relative grounds only (70%), with 20% based on absolute grounds only and the remaining 10% on both relative and absolute grounds.

About 60% of applications are based on several grounds of invalidity. Bad faith is cited in more than 20% of invalidity applications, either on its own or accompanied by a relative ground.

In revocation proceedings, lack of use is the ground most frequently cited. INPI has also received about 30 applications based on the ground that a trade mark has become a common name or has become liable to mislead the public.

The average duration of proceedings from receipt of application to decision is 8.5 months but cases that involve a hearing can take up to 17 months. About 30% of proceedings are terminated without a decision on the merits.

In 85% of decisions, the proceedings were recognised as totally or partially founded, leading to more than 1,000 trade marks being totally or partially cancelled.

In relative grounds cases, over 85% of cases related to infringement of trade mark rights are accepted, but only around 50% of those based on rights in company names.

On absolute grounds, more than a quarter of decisions have involved bad faith and 50% of these cases have been justified, compared to only 30% of applications based on other absolute grounds.

Only 4% of revocation applications have been dismissed outright, compared to 74% of proceedings being deemed fully justified and 22% partially justified.

More than half of decisions rule on costs, with the average amount awarded being €680.

INPI says the Cancellation Unit includes 10 full-time equivalent staff and a manager.

INPI states in its report: “There has been an increase in the number of voluminous files, potentially arising from long-standing disputes. These cases are complex because of the multiplicity of players and proceedings, and the growing volume of documents submitted for consideration. This may be a sign of the increasing acceptance of this tool by users and their confidence in these new administrative procedures.”

The information on administrative procedures is included in the 13^th issue of the INPI Law Journal, which is published in English several times a year. The INPI Law Journal is based on PIBD, which has been published in French by INPI since 1968. PIBD can be read online here.