Premium Beauty News - The law governing intellectual property rights in France was reinforced recently. Could you give us more details?
Matthieu Bourgeois - This reinforcement of the legislation is mainly due to the “law for the modernisation of the economy”, in French loi de modernisation de l’économie or LME, dated August 4 2008.
The new law primarily focused on improving the protection of brand licensees. Whether they hold rights on a trademark, a patent or a design, licensees are now entitled to participate in intellectual property infringement proceedings against a third party, even though in the event where their license contract would not have been published by the French trademark office (Institut National de la Propriété Industrielle - INPI). The previous situation, which was a major obstacle to fight infringement behaviours, is now outdated.
Secondly, the LME provides that all litigation related to intellectual property rights shall be the jurisdiction of the French civil court (the Tribunal de grande instance). It is something new for copyrights that used to be in the jurisdiction of commercial or labour courts.
Litigations between employers and employees, where intellectual property issues are more and more frequent, should no longer be submitted to labour courts (Conseils des prud’hommes). This may decrease the number of cases that employees submit to courts, as they will have to file two proceedings, thus implying additional costs.
Premium Beauty News - What about trademarks?
Matthieu Bourgeois - The LME authorized the French government to implement the main provisions of the Singapore Treaty [1] .
The implementation has been fulfilled through the Ordinance N. 2008-1301 of the French government of December 11, 2008 [2] , which simplifies and improves the trademark registration proceedings in France.
However, this text is a bit disappointing, as it does not contain anything new about the scope of protection of trademarks, while certain provisions of the Singapore Treaty dealing with non-visible signs, such as olfactory signs, for instance, would have made possible to introduce some changes in this area.
Unfortunately, the divergence between the French law - which still refuses olfactory signs as trademarks - and the OHMI, the European office in charge of European trademarks - which accepts the validity of such signs as trademarks [3] - is still pending.
Premium Beauty News - Did the law also change the rules governing patents?
Matthieu Bourgeois - As far as patents are concerned, there are two important news in the LME.
On the one hand, the patentability field is extended to “technological sectors” [4] , and to the second therapeutic application [5] .
On the other hand, the LME provides that a patent holder has the possibility to limit the scope of protection of its own patent, in order to escape to the nullity that would be raised by the adversory party during infringement proceedings.
Once again, French lawmakers have greatly improved the protection of owners’ of intellectual property rights. Indeed, the nullity of patents was often raised when their scope was not sufficiently described.
