Protection of industrial property titles – Defence of intellectual property rights during the Covid-19 crisis
Corinne Thiérache, Laura Raimondo and Alice Gautron
Protection of industrial property titles
1. At the French level: The National Institute of Industrial Property (INPI)
The examination and issuance of industrial property titles as well as the publication of the National Commercial and Companies Register are maintained during the Covid-19 crisis. Therefore, the following online procedures before the INPI can still be completed: filing applications of trademarks, patents, designs and dematerialized “Soleau envelopes”, renewal applications of trademarks, payment of patent annuities, registrations of geographical indications.
Concerning the deadlines prescribed by the Intellectual Property Code, the Orders adopted by the French government on March 25, 2020 and April 15, 2020 provide that all time limits occurring between March 12, 2020 and one month after the end of the national state of health emergency (known as the "legally protected period" whose cessation has been set on May 24, 2020 for now) are extended to:
• One month after the end of the legally protected period if the initial period was one month (that means until July 24, 2020),
• Two months after the end of the legally protected period if the initial period was two months or more (that means until August 24, 2020).
To date, the date of cessation of the state of health emergency scheduled on May 24, 2020 could be subsequently extended regarding the evolution of the Covid-19 pandemic and the recent governmental measures.
According to the INPI, this extension of the time limits will apply to the following procedures: trademarks opposition, payment of patent annuities, trademarks renewal, designs extension, filing of an administrative or judicial appeal, comments from third parties or response to a notification from the INPI.
Finally, the new administrative proceedings for invalidity and revocation of trademarks before the INPI have come into force by the due date of April 1, 2020. Any time limit calculated from that date will be affected by this extension.
2. At the European level
Just like the INPI, both following European institutions have already taken significant measures and have adjusted their functioning to take into account the health crisis:
• The European Union Intellectual Property Office (EUIPO) has decided to extend all time limits expiring between March 9, 2020 and April 30, 2020 until May 1, 2020. The following statutory time limits are notably covered by the extension: the payment of basic fees for trademarks application or renewal, the claim of a right of priority, the trademark opposition or the filing of an appeal.
• The European Patent Office (EPO) has decided to postpone until further notice all oral proceedings in examination and opposition proceedings scheduled until April 30, 2020. A pilot will be started for opposition oral proceedings by videoconference. All time limits expiring as from March 15, 2020 are extended until May 4, 2020.
3. At the international level: The World Intellectual Property Organization (WIPO)
The WIPO has decided to continue the process of the main applications within its competence, notably those filed through the global IP services and those filed under the different international registrations for patents, trademarks, and designs.***
For anyone who may be tempted to register the sign "Coronavirus" or "Covid-19" as a trademark, please be informed that some industrial property offices around the world have already ruled over the opportunity to register these trademarks (particularly in the USA and Belgium) and announced that these trademark applications are unlikely to be accepted. In France, the registration of the sign "Coronavirus" or "Covid-19" as a trademark to designate drugs or masks could probably also be rejected by the INPI due to lack of distinctiveness.
Defence of intellectual property rights before French national jurisdictions
All civil and commercial cases pending before the French courts are impacted by the Covid-19 crisis until further notice. Only absolute civil emergencies have been handled by the courts since March 16, 2020, which obviously excludes any intellectual property litigation.
Therefore, the implementation of procedures related to intellectual property issues will not be easy during this national state of health emergency.
Regarding the ongoing proceedings:
• From March 17, 2020, all scheduled hearings are cancelled, and all deliberations are extended.
• All time limits expiring between March 12, 2020 and one month after the end of the national state of health emergency are extended, as recalled above.
• All current time limits which have not expired during this period are maintained.
Please also note that there is no automaticity. Thus, it is still recommended to complete the due diligence within the required deadlines in order to avoid any delays.
Regarding the non-initiated proceedings, no seizure for counterfeiting can be carried out by a bailiff. However, any victim of intellectual property infringement can still prepare his case upstream for future litigation, and in particular by:
• Drafting by a bailiff statements of facts; either an Internet report in order to prove the existence of disputed contents online, or a report of online purchase of allegedly counterfeit goods or works of art in order to demonstrate that they are being illegally marketed, reproduced or represented,
• Collection of affidavits or supporting documents,
• Dematerialized deposit of a “Soleau envelope” before the INPI or a source code before a bailiff or the Agency for the Protection of Programs (APP) in order to give a certain date to the creations.
Finally, the new Securact platform allows that the service documents by a bailiff be performed with the qualified electronic signature, notably serving a writ of summons. If the addressee of the document refuses to give his consent, the bailiff must perform a service "without contact" by going to the addressee's residence and taking all sanitary precautions.
In any event, all measures shall be taken to adapt the functioning of the litigation proceedings to the exceptional situation. Thus, Article 7 of Order of March 25, 2020 provides for videoconference or any electronic means of communication hearings. According to Article 8, the judge may decide that proceedings will only be conducted in an exclusively written form. Thus, the parties will have 15 days to object, except in summary proceedings.
With the help of Alice Marie, Student Lawyer at the EFB.