An 8 September 2016 ruling of the Court of Justice of the European Union (CJEU) has disrupted the French legal framework relating to recordals in the trademark register.
In France, legislators established a distinction between so-called “major” and “minor” recordals.
Regarding trademarks, Article L714-7 of the Intellectual Property Code prescribes: “Any transfer or modification of rights under a registered mark shall only have effect against others if entered in the National Register of Marks.
This article implies that any assignment, merger… must be recorded in the trademark register to enable the new owner to claim the rights to the mark during litigation (infringement action, opposition).
Conversely, in the case of a change in name, address and/or legal form of the trademark holder, it is not necessary for this to be recorded with the trademark register in order for the proprietor to claim the rights to said trademark.
Nevertheless, the distinction must be qualified in the light of certain judicial decisions which have (exceptionally) wrongly rejected requests made on the pretext that the holder appearing as a registrant of the industrial property rights is not the one bringing the action (e.g.: 13 February 2007 decision of the Tribunal de Grande Instance de Pontoise).
A 21 April 2015 ruling by the General Court of the European Union (EGC), confirmed by the 8 September 2016 Order of the Court of Justice of the European Communities (CJEU), calls into question the principle involved and highlights the value of recording changes in name.
In the present case, an application for a European trademark was filed by the MIP METRO GROUP INTELLECTUAL PROPERTY GmbH & Co. KG on the 26 October 2010, which was published on 8 April 2011, for the distinctive “REAL” sign.
On 24 June 2011, Real Express Srl filed an opposition to this trademark against the MIP METRO GROUP INTELLECTUAL PROPERTY GmbH & Co. KG Company, claiming priority on two Romanian “REAL” trademarks still recorded under their former name SC Unibrand.
Real Express Srl transmitted a copy of a letter sent to the Romanian Office informing them of the change in name of the rights holder in Romania and requesting the recordation of this change in the trademark register to the European Union Intellectual Property Office (EUIPO).
The opposition was rejected by the Opposition Division of the EUIPO due to a lack of evidence of the existence of the prior marks cited in the Opposition proceedings.
The EUIPO considered that Real Express Srl had not proved that the change of name had been recorded or that it had been deemed admissible by the Romanian Office, and that it was therefore not the holder of the prior rights.
On 15 August 2012, Real Express Srl appealed to the EUIPO against the Opposition Division decision, which was rejected.
On 4 November 2013, Real Express Srl lodged an appeal with the EGC against the decision of the EUIPO Opposition Division which was rejected by a 21 April 2015 ruling.
Real Express Srl then formed an appeal against this ruling at the CJEU, which upheld the EGC ruling by an order of 8 September 2016.
It was expressly noted by the European authorities that the documents sent were insufficient in order to establish that the applicant was the proprietor of the prior marks since “Real Express Srl did not produce any evidence from the Romanian Office confirming that the changes of name had actually been recorded, or that the Romanian Office had deemed the change of name applications admissible.”
This means that the change of name must be recorded with the trademark register or at least have been the subject of a recordal application deemed admissible by the concerned trademark office, to ensure that the trademark owner can avail of their rights.
In the first instance, providing the recordal certificate issued by the Office will be sufficient to confirm the recordation of the change.
For the second scenario, determining what evidence originating from the trademark office can be used to demonstrate that the Office has deemed the recordal application admissible is more complicated.
If we transpose this case to France, the question arises whether a copy of the application for recordal filed with the National Institute of Industrial Property (INPI) with an acknowledgement of receipt from the INPI would suffice? A priori, this document does not demonstrate that the application was deemed admissible but only that the request has been received by the INPI.
In conclusion and although the scope of this CJEU case law is not yet fully defined, the CJEU ruling makes it apparent that in order to avoid any risks disputing the ownership of a right, it is strongly advised record a change of name as soon as possible after it occurs and as far as possible in advance of any judicial or opposition action.
