Trade and Service Marks
– Book VII of the Intellectual Property Code.
Membership in International Conventions
– Convention Establishing the World Intellectual Property Organization (WIPO), since October 18, 1974.
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Madrid Agreement Concerning the International Registration of Marks.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), in force since January 24, 1965.
– Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Stockholm Act, since August 12, 1975.
– Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Stockholm Act, since August 12, 1975.
– Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks, since August 9, 1985.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since November 7, 1997.
– European Union Trade Mark Regulation.
– Trademark Law Treaty, since December 15, 2006, in force since November 28, 2009.
– Singapore Treaty on the Law of Trademarks, since November 28, 2009.
Right to the mark: belongs to the first applicant (use does not give rise to a right).
Applicant: any natural person or corporate body, even without business in France.
Types of marks: manufacturing or trademarks (goods), service marks; collective marks for goods or services by groups of producers, manufacturers or merchants, etc.
Registrable: surnames, geographical names, coined words, characteristic shape of a product, labels, emblems, logotypes, holograms, tone signals such as musical phrases, combinations or dispositions of colors, letters, figures, devices, etc., intended to distinguish the products or services.
Conditions of registration: a mark shall not be contrary to public policy and morality; shall not be a sign excluded by Article 6ter of the Paris Convention; and shall not be deceptive. It must be distinctive, i.e. it shall not be a “necessary” or “generic” designation either in professional language or in current language; it shall not indicate a characteristic of the product or service it designates and especially the kind, the quality, the quantity, the destination, the value, the geographical origin, or the time the goods were manufactured, or the services rendered; and it shall not be exclusively constituted by the shape imposed by the nature or function of the product or giving the product its substantial value. Use can confer its distinctive character to the mark, except regarding the shape of the sign.
Priority: may be claimed within six months from the first filing.
Classification: the International Classification (11th Edition as of January 1, 2017). One single application may cover several classes without limitation, on payment of additional fees (from 4th class). Class headings are not all accepted as such and detailed wordings are to be provided.
Territory covered: see Section 1. “General Information“.
Electronic filing: online only. For international trademarks: exclusively online.
Filing requirements for an application (online filing mandatory):
1. Power of representative (not required for a qualified French patent attorney nor for an “Avocat” (French attorney-at-law));
2. Priority document within three months from the filing, along with French translation thereof;
3. For collective marks, complementary statutes determining the conditions of use.
Novelty: availability search is not conducted by the French Trademark Office (INPI) before examination.
Examination: the French Trademark Office only examines if the above-mentioned conditions of registration are fulfilled (lawfulness and distinctive nature of the sign). The rejection is preceded by a notification to which the applicant may reply by giving arguments in favor of the registration. Silence of the administration during six months as of the filing date is considered as an implied rejection of the filing.
Disclaimers: not available.
Appeal: a final rejection of the application by the Trademark Office may be appealed before the Court of Appeal.
Accelerated examination: not available.
Division: possible under conditions (divisional applications benefit from the initial filing date).
Publications: after filing and registration, the mark is published in the Official Bulletin (BOPI).
Observations: within a two-month period from the publication of the application, observations may be filed by anyone at the Trademark Office. As of November 2, 2017, third party observations can only be filed online.
Oppositions: may be filed within a two-month period from the publication of the application by the owner or exclusive licensee of a prior trademark or a prior application or by the French National Institute of Origin and Quality Director on the basis of Protected Geographical Indications or Protected Designation of Origin or by a territorial collectivity. Oppositions can only be filed online. Only one right (one trademark or one PGI or one PDO) may be invoked per opposition. Within a further two-month period, the applicant may file observations in response to the opposition. Proof of use of the prior trademark may be requested if said prior trademark was registered more than five years before the date of request of proof of use. Oral observations may be presented by either party before the Trademark Office takes a decision, upon request. If the opposition is uphold, the registration of the French trademark will be rejected partly or totally. Silence of the administration during six months as of the filing date of the opposition is considered as an implied rejection of the opposition.
Appeal: the final decision issued by the Trademark Office may be appealed before the Court of Appeal.
Right conferred: registration of the mark confers an exclusive right thereon starting from the application date.
Scope of protection: is restricted to the goods or services designated in the registration and to “similar” products or services. Highly notorious marks may benefit from a wider protection.
Duration: ten years from the end of the month of the filing date.
Extension of duration: before the expiry of the ten-year period; possibility of late renewal in the six months following the expiration date (supplementary fees). For renewal, the mark and the designated goods or services must remain unchanged, except for any deletion of goods or services. If any other change is desired, a new application is required.
Marking: not compulsory; no recommended form but it is advisable to indicate that the product/service is subject to trademark protection.
Assignment of mark or granting of license: may be independent of an agreement concerning goodwill. It may be total or partial. It must be recorded in the Trademark Register in order to be effective against third parties. The agreement is published. If required the publication may be limited only to relevant extracts such as date, parties’ identification, assignment provisions. The recording fee is not computed according to the assignment price or license price and is low. An assignment, even a partial one, cannot comprise a territorial limitation.
Modification of Protection after Registration
Use: a registered mark that has not been used genuinely by the owner or by a third party with the consent of its owner within a five-year period from publication of registration, and without good reason, may be liable to revocation upon request of an interested party. The following acts can be considered as a valid use of the mark: use in a modified form which does not alter the distinctive character of the mark; affixing the mark in France to products or to the packaging thereof solely for export purposes; use in connection with goods or services (invoices, stationery unless if the sign in cause is only used as the name of the company in the documents and does not designate the goods or services). The renewal of a trademark does not provide a new five-year period.
Nominal use: case by case assessment; serious use required.
Collective marks: (1) collective simple mark: may be used by any person who complies with regulations for use issued by the owner of the registration. The collective simple mark has the function of guaranteeing the origin of the products/services as a classic mark; (2) collective certification mark: shall be affixed to goods or services that display, in particular, with regard to their nature, properties or qualities, the characteristics detailed in the respective regulations. The collective certification mark acts directly as a guarantee of quality in the interests of consumers.
Cancellation of a registered mark: may be requested at any time by the owner of a prior identical or confusing mark. Only the Civil Courts may pronounce the cancellation of a registered mark. The owner of a mark who has tolerated the use of an infringing mark for five years is no longer entitled to a cancellation action nor to an infringement action. The owner of a trademark shall also be liable to revocation of his trademark if it has become the common name in trade for the good or service or has become liable to mislead as regards the nature, quality or geographical origin of the good or service.
“Well-known” mark: the owner of a well-known mark, within the meaning of Article 6bis of the Paris Convention, not filed in France, may request the cancellation of a registered mark similar with his own “well-known” mark within five years of the filing date of this latter, unless registration has been applied for in bad faith.
Infringement: reproduction, use or affixing of a mark for identical goods or services, suppression or modification of a duly affixed mark; reproduction, use or affixing of a mark for similar goods or services and imitation of a mark for identical or similar goods and services likely to create a likelihood of confusion, unless the goods/services have been commercialized in the European Economic Area (EEA) by the owner of the mark, or with his consent. Facts subsequent to filing but prior to publication of the registration of the mark cannot be considered to have infringed the rights attached thereto. However, when a copy of the application has been notified to an alleged infringer, liability may be invoked for facts subsequent to that notification even if they are prior to the publication of the registration. Action for infringement may be preceded by a seizure in order to obtain evidence of the infringement and information about its scope. The trademark owner or its exclusive licensee may request measures to prevent infringement or continuing infringement. Said measures may be granted subject to remittance of an amount of money fixed by the court. The owner can assert his rights by bringing the dispute before the civil and/or criminal courts.
Civil Court: generally, the owner chooses to go before the civil court because good faith is indifferent.
Criminal Court: as the criminal offense of counterfeiting is an intentional offense, the owner must establish the bad faith of the alleged infringer.
Penalties: confiscation or destruction of the goods and/or payment of damages, and/or confiscation or destruction of the tools used to manufacture the counterfeiting goods and/or publication of the decision, depending upon the context. Customs may seize the goods showing an alleged infringing mark. The alleged infringer can face sentences of up to four years of imprisonment and/or a fine of 400,000 euros. These penalties are increased to 500,000 euros and five years imprisonment for products dangerous for health, for human or animal safety or products from criminal networks. A civil action may result in the payment of damages, the amount of which depends on the loss suffered (loss of profit, damage to the image, etc.).
European Union Trademark (EUTM) Conversion
Upon receipt by the French Trademark Office of the request of conversion transmitted by EUIPO, the French Trademark Office sends a notification either to the applicant or to his representative, requesting the applicant to submit the following documents:
Filing requirements (copies of documents are requested together with a translation into French):
1. The EUTM application as filed;
2. The request of conversion together with its enclosures;
3. Decisions issued by EUIPO if any;
4. The French trademark application form, with official fee paid;
5. If a priority was claimed for the EUTM application, such information must be indicated in the French trademark application form and a document certifying such priority must be provided;
6. 5 prints of the mark;
7. For collective marks, complementary statutes determining the conditions of use.
Electronic filing: not available.
Time limit: a three-month period is given to the applicant in order to complete the application procedure in France.
If the filing requirements are fulfilled, the French trademark application will be published and oppositions may be filed by owners of prior trademark’s rights and/or written observations presented by any concerned third party within the following two months.
Post-filing proceedings: same as for a direct national application. (see Section 6. above).