Since its creation in March 2018, the Institut de Boufflers has made the statute of limitations for actions for cancellation of national industrial property titles one of its main concerns. As early as March 2018, the Institute took the initiative of organising a conference on the subject; the contributions of this conference were then published in a file of the Revue Propriété Industrielle in June 2018. Finally, in November of the same year, the Institute produced a note proposing to include the imprescriptibility of the said cancellation actions in the law relating to the growth and transformation of companies – the so-called “PACTE law” – and to accompany this new principle with a transitional law rule according to which the new law would also apply to titles producing their effects on the date of its publication. This proposal seems to have gained ground, so much so that we even find traces of it today in an amendment adopted by Parliament, which gave rise to Article 124 of the PACTE Act.
Thus, from now on, the PACTE law – which has meanwhile become law no. 2019-486 of 22 May 2019 – provides that actions for invalidation of industrial property titles are not subject to any statute of limitations, while specifying that the said statute of limitations concerns “titles in force on the day of its publication” (art. 124, III°). How should this last precision be interpreted?
Let us avoid from the outset the interpretation according to which the legislator, by referring to titles in force on the day of publication of the law, would have excluded, a contrario, not only titles which were not in force on that date, but moreover all those which will no longer be in force on the same date, because it is self-disqualifying. A rule of transitional law can have no other object than transitional law, i.e. it can only concern the application of the law to legal situations prior to the entry into force of the law; this is self-evident. No one seems prepared to argue the contrary.
In fact, only one question can be seriously asked with regard to the transitional law rule under discussion: can it have a retroactive effect by covering securities in force on the day of publication of the law, even though the limitation period would have been acquired on that date? In other words, could the new provisions relating to imprescriptibility apply to all pending and future actions for annulment concerning titles already in force at the time of the entry into force of the law, naturally without the decisions that have become res judicata being called into question? It would thus be permissible, exceptionally, to call into question prescriptions acquired under the previous law. A court of appeal could, for example, apply the new law to a title in force on the date of entry into force of the law of 22 May 2019 and to which the statute of limitations would have been applied at first instance.
The prevailing principle is that of the non-retroactivity of the new law, which is deduced from article 2 of the Civil Code, and its counterpart is the immediate effect of this law, so that, ultimately, the latter cannot annihilate a right to act that arose before its entry into force. Article 2222 of the same Code specifies, for its part, that acquired prescriptions cannot therefore be called into question. The legislature may nevertheless provide, by way of exception, for the retroactivity of a law. Provided, according to the Court of Cassation, that the legislator expressly expresses the will to do so. In this case, Article 124, III, of the PACTE Act does not specifically state that it is ‘retroactive’, but this is not what Article 2 of the Civil Code or the interpretation of the Court of Cassation requires either. Moreover, a reference to the law being ‘retroactive’ would, as such, be of little use, as it would be insufficient.
It can always be argued that the expression of an express will, required by the Court of Cassation, implies that a transitional provision is clear and precise. It is true that these two criteria concern the entire text of the law and thus, among other things, the transitional rules of law. But let us not forget that this criticism of lack of clarity can be levelled at a number of texts, starting with Law no. 2008-561 of 17 June 2008 when it places the starting point of the limitation period for civil actions on the day of knowledge of the facts (Article 2224 of the Civil Code). The clarity of the concept of knowledge of the facts is not self-evident. The lack of clarity must therefore be invoked sparingly, if one does not wish to deprive all laws of their effect. This explains why the assessment of the said clarity falls to the Constitutional Council, when it examines the quality of the law, and not to the judges of the merits. Moreover, the transitional law rule under discussion does not appear to be particularly obscure or imprecise, especially when compared with other rules of the same type.
However, it should be borne in mind that the legislator intended to put an end to case law that had been corrected by his text. It was therefore necessary to avoid restricting its application to pending proceedings, to proceedings for annulment brought after its entry into force or to actions for annulment based on titles issued after its entry into force. On the contrary, the text had to be formulated in such a way that it could be applied to all titles in force, which includes in particular all the aforementioned hypotheses, but also titles issued previously and which had not yet given rise to proceedings on the date of the publication of the law. It is in this sense that the Institut de Boufflers proposed the wording according to which the new law concerns titles “producing their effects on the date of entry into force of the present law”. And it is undoubtedly also in this sense that the rule of transitional law adopted by Parliament, according to which the new law applies to “securities in force on the day of its publication”, should be interpreted today in such a way that the said law can apply to pending and future actions and therefore, in certain well-defined cases, have a retroactive effect.
Matthieu Dhenne
Avocat (Paris Bar)
President Institut de Boufflers
Senior Research Fellow (Max-Planck Institute)
The opinions expressed in this article are those of the authors and do not reflect the position of the Institute.