Under the former trademark law, cancellation actions for non-use were available against registered marks which had not been used for a period of 5 years prior to the filing date of the action and the resulting decision to cancel the registration was deemed to be effective as of the same filing date.
However, the new Trademark Law, which entered into effect on December 28, 1991 (as reported in our Information Letter N.S. 177), provides that the relevant period of non-use for cancellation actions is the 5-year period following the later of either:
1) the effective registration date; or
2) the last date on which the mark was used,
and not the 5-year period immediately prior to the filing of the action.
Therefore, decisions cancelling registrations under the new law are deemed to
be effective as of the end of the relevant 5-year period, even though the
cancellation action may have been initiated subsequent to that date.2) the last date on which the mark was used,
The uncertainty which arose in the application of these provisions gave rise to a number of inconsistent decisions in various District Courts and Courts of Appeal. Therefore, the Paris Court of Appeal referred the following issue to the Court of Cassation:
Is a cancellation action presently available on the ground of non-use for a
5-year period which elapsed wholly or partly before the effective date of the
new law, i.e. December 28, 1991, without giving retroactive effect to the new
law, since retroactive effect would conflict with the provisions of the new law
and the Civil Code?
The Court of Cassation's opinion advised as follows:
1) the provisions of the new law cannot be applied to a case initiated after
December 28, 1991 where the 5-year period of non-use occurred entirely
prior to the effective date of the new law;
2) the provisions of the new law may only apply to a case initiated after December 28, 1991 where the period of non-use occurred wholly, or at least partially, after the new law's effective date.
2) the provisions of the new law may only apply to a case initiated after December 28, 1991 where the period of non-use occurred wholly, or at least partially, after the new law's effective date.
The somewhat incongruous results of this opinion mean that those registrations obtained prior to December 28, 1986, and that were vulnerable to cancellation on the ground of non-use before December 28, 1991, may not be cancelled until December 28, 1996. However, registrations obtained subsequent to December 28, 1986 may be cancelled for non-use at any time under the provisions of the new law. Unfortunately, this provides an unfair advantage to owners of old registrations that have not been used since before December 28, 1986, because their registrations may not be cancelled until December 28, 1996, thereby providing them more time within which to commence or resume use of their marks.
Since the Court of Cassation's opinion is not binding on the lower courts, it is not presently clear whether or how it will be applied. However, since this opinion may have persuasive effect on lower courts, it must be taken into account when parties consider bringing, or defending, non-use cancellation actions in France.
November 1994 Index