Registration of marksi Inherent registrability
A French trademark application may be filed by one or more legal or natural persons, by a French person, or by a foreigner if he or she is a beneficiary of the CUP, or a national of a WTO Member State, or domiciled in France. Similar requirements are found for EU trademarks. The application can be made by the applicant him or herself, or by a qualified representative (which is mandatory when the trademark is registered on behalf of several persons or when the applicant is neither established nor domiciled in France, not in a Member State of the European Union nor in a European Economic Area country). The applicant has to provide a model of the trademark and must enumerate the goods and services covered by it. The application provides a national number recorded on the receipt or notified to the applicant. Third parties may make observations during a period of two months following this publication and, if necessary, file an opposition.
INPI and EUIPO examine only absolute grounds for refusal, performing an assessment of the sign and the designated goods and services.
INPI does not search for previous potentially conflicting trademarks.
It is possible to request to modify or withdraw, totally or partially, the application up until EUIPO starts to make the technical arrangements for registration. Such requests must be in writing.
The procedure before the European Trademark Office is quite similar: the first step is a verification of the formal compliance of the application with Regulation No. 2017/1001, then the list of goods and services is sent to the Translation Centre for the Bodies of the European Union, in Luxembourg. If it has been requested, a research report can be drafted about potentially conflicting trademarks; the report can also cover national marks, in which case a request is transmitted to the required national trademark office. All reports are then sent to the applicant before the European Trademark Office considers absolute grounds of refusal. Afterwards, the application is published in the EUTM Bulletin; oppositions can be filed within three months of this publication.
Once an application is filed, the owner receives a six-month priority right to make other applications in Europe or abroad, while keeping the initial application date.
For both French and EU trademarks, registration takes effect from the date of filing of the application for a period of 10 years, which is renewable indefinitely.
The renewal of French trademarks must be made within a period of six months, expiring on the last day of the month in which the period of protection ends. However, the declaration can still be made within six months of the day following the last day of the month in which the protection expires, but a supplemental fee has to be paid.
EU trademarks may be renewed six months before their expiry date, and they also benefit from a six-month grace deadline, subject to payment of a fee (an additional 25 per cent).
The charges for an application at INPI of up to three classes of goods or services are €250 for a paper-based application, or €210 for an internet-based application. There is an additional cost of €42 per class if the applicant chooses to apply for more than three classes. Renewal fees are the same as filing fees.
Charges for an EU regular trademark application designating one class are €1,000 for a paper application and €850 for an electronic application; an additional €50 is charged for a second class and €150 for all subsequent classes. Renewal fees are the same as filing fees.ii Prior rights
Article L711-4 of the French IPC establishes the following open list of rights that may constitute a prior right to a trademark: registered or well-known trademarks, company names, trade names, geographical indications, copyrights, industrial designs, third-party personality rights (especially a family name, pseudonym or image), and the name, image and reputation of a local public entity.
The prior-right assessment depends on the right invoked. For prior trademarks, company names and trade names, it will be the likelihood of confusion between the signs at stake; for famous or well-known signs, name, image and reputation of a local public entity, it will be an assessment of the harm to the prior sign. Also, regarding personality rights and domain names, it can be an assessment based on civil liability and therefore more generally an assessment of the harm to the prior right.iii Inter partes proceedingsOpposition proceedings
Third parties may file their opposition within two months of the publication of an application. There is no possible extension of this deadline. Opposition proceedings are available to:
- the owner of a trademark that was registered or applied for earlier;
- the owner of a well-known trademark;
- the owner of a trademark that has an earlier priority date;
- an exclusive licensee;
- the director of the agency in charge of the indications of origins and geographical indication; and
- local public entities.
As of May 2016, all oppositions have to be filed online on INPI’s website. The opposition is notified to the applicant. The applicant has at least two months to present counter-observations. If the applicant fails to do so, the INPI will make a decision on the matter. In the case of proper compliance by the applicant, the INPI shall issue the draft of a decision, which will be communicated to both parties, who will both have the opportunity to present their observations. If the draft is not contested, it will be adopted as a decision. During opposition proceedings, the applicant may request evidence of use of the prior trademark if it has been registered for more than five years. The INPI fee for filing an opposition is €325. The opposition may be filed by the right holder or by appointed counsel.
Opposition proceedings are also available against EU trademark applications and must be filed within three months of the publication of the application. The opposition fee is €320. After the opposition is declared admissible, there is a cooling-off period during which the parties are given the opportunity to terminate the proceedings. Afterwards, parties are each given two months to communicate their arguments on the case; there can be several exchanges of briefs. EUIPO will then make a decision about the opposition.
If an EU opposition succeeds, the applicant will have to pay the other party’s costs (roughly €650); if it fails, the opponent will have to bear the costs (roughly €300). In the case of only partial loss, the costs will be shared. There are no such provisions regarding French trademarks.Invalidity proceedings
Trademarks can be challenged by invalidity actions before a court specialised in trademark law that has territorial jurisdiction on the case. If the trademark is not distinctive, if it is deceptive, contrary to public policy and public morals, or if it cannot be represented graphically, any interested party can request its invalidation. However, if the trademark infringes a prior right (trade name, surname, copyright), only the holder of the prior right can initiate an action.
Infringement actions based on prior rights, whether copyright or trademark, as well as civil liability actions (i.e., rights on a corporate name), can also be brought against a trademark before a specialised court, and can lead to its invalidation.Trademark property claims
Trademark ownership may be claimed by a party who considers that the trademark has been applied for fraudulently.
Judicial first instance proceedings usually last nine to 18 months. The court fees are a few hundred euros.iv Appeals
An appeal against a ruling from INPI rejecting a trademark may be lodged within one month of the ruling before the specialised appeals court that has jurisdiction on the territory where the claimant resides. The deadline is extended by a month if the appellant resides outside Metropolitan France and by two months if the appellant resides outside France. These proceedings usually last four to 12 months.