TRADEMARKS FILING AND PROSECUTION IN FRANCE
According to Article L. 711-1 of the IPC the definition of trademark states that: “A product or service mark is a sign used to distinguish the products or services of a natural or legal person from those of other natural or legal persons. This sign must be able to be represented in the national register of marks in such a way as to allow any person to determine precisely and clearly the object of the protection conferred on its holder.”
Trademark in France may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | National Institute of Industrial Property |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing | Power of Attorney simply signed |
| a trade mark application | Certified copy of the priority document if claimed, with English translation. |
| Requirements Details for filing | Name and address of the applicant, clear representation of the trademark, list of goods and/or services., evidence of use if the sign’s distinctiveness has been acquired through use; (Mentioned in Article R. 713-3) |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
https://www.inpi.fr/comprendre-la-propriete-intellectuelle/la-marque
Trademark searches in FRANCE
Under the “First to File” principle, if any other applicant files application for an identical or similar trademark used for identical or similar goods and services after the first applicant has applied, the later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in France can be conducted for word mark, numbers, etc. An official search can be conducted at the records of the National Institute of Industrial Property for similarity. The official website also encourages you to conduct a similar mark search on their online database to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
It is advisable to conduct comprehensive trademark clearance search in France to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in France. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks.
The link for search in the database: https://data.inpi.fr/
Filing trademark applications in France
A person may file multi-class or single class trademark application in France.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in France
Ordinary trademark applications filed in France are applications without claiming any priority. Multi class trademark applications may also be filed in France. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in France /Convention trademark applications France:
A priority trademark application may be filed in France. A priority trademark application should be filed in France within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in France within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
France follows the nice classification of classes. National Institute of Industrial Property uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Publication of the trademark in France
The filing is published in the Official Industrial Property Bulletin (BOPI) by the INPI, within 6 weeks and INPI will send a notice of publication to the applicant and publication opens for a period of two months during which the trademark may be subject of opposition.
Examination in France
Alongwith publication, INPI examines the request on the substance and on the form then notifies applicant by email if the filing contains an irregularity.
Further, INPI examines the application and raise the refusal (if any) as mentioned below:
Absolute Grounds for Refusal
According to Article L. 712-7 of the IPC, a trade mark cannot be registered if:
- the application lacks representation of the trade mark, the list of goods and services, the applicant’s identity or proof of payment of official taxes;
- the sign exclusively constitutes the shape or another characteristic of the goods imposed by its nature, necessary to obtain a technical result or conferring substantial value to the good;
- the sign is excluded by Article 6ter of the Paris Convention;
- the sign is contrary to public morality or its use is legally prohibited;
- the sign is misleading, particularly with regard to the nature, quality or geographical origin of the goods or services;
- the sign consists of a prior plant variety’s denomination;
- the sign lacks distinctiveness; or
- the INPI rejects the opposition following an opposition proceeding.
Relative Grounds for Refusal
According to Article L. 711-3 of the IPC, a sign cannot be registered as a trade mark if it infringes earlier rights, namely:
- a trade mark application (provided it is further registered) or registration;
- a registered trade mark or trade mark application (provided it is further registered) with reputation, whether or not the goods or services are identical or similar;
- a company name, where there is a risk of confusion in the public mind;
- a trade name or signboard known throughout the national territory, where there is a risk of confusion for French consumers;
- a protected appellation of origin;
- an author’s rights;
- rights deriving from a model or design;
- personality rights of a legal person, particularly his surname, pseudonym or likeness;
- a territorial collectivity’s name, image or repute; or
- a public entity’s name.
Responses to Examination Report
The applicant must correct errors and/or contest the arguments put against the applicant within the deadlines which appear in the letters from the INPI.
At this stage, a partial or total withdrawal on applicant’s part is possible and is carried out online. The INPI may also totally or partially reject the request, following examination of it or following an opposition procedure.
Trademark registration in France
After the examination process is completed and the mark is accepted for registration, INPI publishes the registration of the deposit with the BOPI and the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Use in France
A registered mark may be subject for a cancellation action by any interested party if it has not been used for 5 consecutive years.
Trademark Renewal in France
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.
The relevant link for any further clarification:
https://www.inpi.fr/proteger-vos-creations/proteger-votre-marque/les-etapes-cles-du-depot-de-marque
