An action for invalidity is a legal procedure aimed at invalidating an intellectual property right (such as a trademark, patent, design, etc.) by proving that it does not meet the conditions of validity required by law. This action may be brought by any person or entity with a legitimate interest in challenging the validity of the right in question.
The grounds for cancellation may vary depending on the type of intellectual property right, but they most often include:
- Lack of distinctiveness or novelty: For example, for a trademark that is not distinctive or too descriptive, or for a patent if the invention is not new or inventive.
- Fraud or bad faith: If the right was registered fraudulently or with knowledge of the existence of a similar prior right
If the action for invalidity is upheld by the court, the IP right is deemed never to have existed. It means that all actions based on that right (such as infringement actions) retroactively lose their validity.
The action for invalidity of intellectual property rights is governed by the Intellectual Property Code (CPI), depending on the type of right concerned.
- For trademarks:
Article L.714-3 of the CPI specifies that a trademark may be declared invalid if it does not meet the conditions of validity provided for by law, in particular in the event of a lack of distinctiveness, descriptiveness, or registration in bad faith.
- For patents:
Article L.613-25 of the CPI provides for the invalidity of a patent in the event of non-compliance with the conditions of patentability, for example, if the invention is not new, inventive or susceptible to industrial application. Article L.613-26 supplements these provisions by detailing the conditions under which invalidity may be invoked.
- For designs:
Article L.513-1 of the CPI provides that invalidity may be declared if the design does not meet the conditions for protection, for example, if it is not new or does not have individual character.
- For copyright:
Although there is no specific provision on the invalidity of copyright (as these rights are acquired automatically), actions for invalidity may concern copyright transfer agreements, for example, for lack of consent or unfair terms. Articles L.131-1 et seq. of the CPI govern the conditions to transfer copyright.