Legal framework

National

French trademarks are governed mainly by Law 1991-7, which implements the EU First Trademarks Directive (89/104/EEC) and is codified in the IP Code. The code was amended several times, in particular by Law 2007-1544, which implements the EU IP Rights Enforcement Directive (2004/48/EC).

EU Directive 2015/2436 was incorporated into national law by a ruling of 13 November 2019 – most of the provisions entered into force on 11 December 2019.

International

France has ratified the following international conventions and treaties:

• the Paris Convention for the Protection of Industrial Property (20 March 1883);
• the Madrid Agreement (14 April 1891);
• the Madrid Protocol (27 June 1989);
• the Nice Agreement (15 June 1957);
• the Vienna Agreement (12 June 1973);
• the Trademark Law Treaty (27 October 1994);
• the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights (15 April 1994); and
• the Singapore Treaty on Trademarks (27 March 2006).

EU trademarks also cover France.

Unregistered marks

French trademark law confers no exclusive right to the owner of an unregistered mark.

However, a well-known mark within the meaning of Article 6bis of the Paris Convention may be protected under civil law under certain conditions and notably, against the use of an identical or similar sign for identical or similar goods or services for which the mark is well-known, provided that there is a likelihood of confusion

In order to enjoy such protection, the well-known mark must be recognised by a substantial proportion of the public in relation to the goods or services concerned.

French courts assess the well-known character of the mark, considering factors such as the seniority of the mark, the scope and the intensity of its use, and the promotional and advertising investments.

Registered marks

Ownership

Any natural person or legal entity can apply for a French trademark before the French Institut National de la Propriété Industrielle (INPI). The application can be filed by the owner itself or its representative.

A representative is mandatory if the trademark has several applicants or if the applicant is not resident in France, an EU member state or the European Economic Area. If the representative is neither a lawyer nor a patent attorney, it must at least be established in the European Union or the European Economic Area and must have a power of attorney (neither notarised nor legalised).

Scope of protection

A trademark can be registered if it is capable of distinguishing the goods or services of one undertaking from those of another.

French trademarks may consist of any signs capable of being represented that allow any person to clearly and precisely determine the scope of protection.

Excluded signs

A trademark that has no distinctive character or that is descriptive or generic may not be protected as a trademark.

The distinctive nature of the sign shall be assessed at the time of the application in relation to the goods or services for which registration is sought.

The following signs have no distinctive character:

• trademarks that consist exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
• trademarks that designate a feature of the product or service (eg, quality, quantity and geographical origin); and
• trademarks that consist exclusively of the shape imposed by the nature or function of the product, or a shape that gives the product its substantial value.

Distinctive character may be acquired by use, except when the sign is of the kind described in the last bullet point above.

The following may not be adopted as a mark or an element of a mark:

• signs excluded by Article 6ter of the Paris Convention (eg, state emblems, official hallmarks and flags), as well as those of the Red Cross;
• geographical indications for wines or spirits that do not originate from that geographical area;
• signs that are contrary to public policy or whose use is prohibited by law; and
• signs that are liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services.

Prior rights

A sign may not be adopted as a trademark where it infringes prior rights, particularly:

• a registered earlier mark or a well-known prior mark within the meaning of Article 6bis of the Paris Convention;
• a company name or a trade name/signboard known throughout the national territory, where there is a risk of confusion in the mind of the public;
• a domain name;
• a protected designation of origin;
• a copyright;
• rights deriving from a protected industrial design;
• personality rights of another person, particularly his or her surname or pseudonym;
• the name, image or repute of a local authority or public inter-municipality cooperation establishment; and
• the name of a public entity, provided that there is a likelihood of confusion.

Search for prior rights

Prior trademark searches usually concern either identical marks/company names or similar marks. In most cases, both types of search are necessary in order to secure a trademark application.

It is recommended to call on French trademark professionals to conduct such a search and analysis, as the ones simply: proposed by INPI do not contain in-depth analysis.

Procedures

Filing

Applications for registration should be filed before INPI together with proof of payment of the filing fees. They should include:

• information on the applicant;
• a sample of the mark; and
• a list of the goods or services for which registration is sought, specifying the classes of the Nice Classification concerned.

Failure to provide the information above or proof of payment will result in the inadmissibility of the application.

If priority is claimed, the reference of such priority should be provided. In case of foreign priority, the applicant shall provide INPI with an official copy of the prior application (with a translation) and proof of the right to claim priority within three months of filing the application in France.

Only one mark may be applied for per filing.

If INPI considers an application admissible, it will be published in the Trademark Gazette within six weeks of the filing date (four weeks in practice).

Examination

INPI examines all applications to determine whether:

• the application and the attached documents satisfy the conditions set by law; and
• the sign may be registered as a mark, based on the criteria listed above.

However, INPI does not conduct any search for prior rights during the examination process.

If an application is considered unfit for registration, INPI will issue an objection (within four months from the filing date), with a deadline for the applicant either to amend the application or to reply to INPI’s objection (one month for formal shortcomings and two months for substantive shortcomings).

In the absence of a response by the deadline or if INPI rejects the applicant’s changes, a final refusal of registration will be issued. Such refusal may concern all or part of the application.

Opposition

Within two months of publication of an application for a French trademark in the Trademark Gazette or, for an international registration, in the WIPO Gazette, an opposition may be filed, in person or through a representative, by:

• the owner of a prior registered mark or a prior application;
• the owner of a prior well-known mark;
• the owner of a company name, provided that there is a likelihood of confusion;
• the owner of a trade name/sign board or a domain name known throughout the national territory, provided that there is a likelihood of confusion;
• any person who has authorisation to defend the rights on the protected designation of origin;
• a local authority or a public inter-municipality cooperation establishment;
• any legal person governed by public law on the basis of its name
• the owner of the mark filed without authorisation in the name of its agent; and
• the exclusive licensee of such marks, unless otherwise stated in the licensing agreement.

The two-month deadline is not extendable.

A representative is mandatory in the same circumstances as for filing applications. The opponent must submit proof of ownership of the mark on which the opposition is based.

If the opposing mark was registered at least five years before the date of opposition, the applicant may request that the opponent provide evidence of use of its mark. The opponent shall then prove the use of its mark for all the goods or services on which the opposition is based or provide proper reasons for non-use.

Following the recent reform, INPI will now rule on the opposition after an adversarial proceeding that includes an investigation phase.

Formal opposition is available.

INPI should decide on the opposition within six months of the end of the investigation phase. In the absence of a decision within such timeframe, the opposition shall be deemed rejected. This period shall be suspended in the following cases:

• ex officio by INPI if the prior mark has not yet been registered;
• at the request of one party if there is a claim pending before the courts; or
• at the request of both parties.

INPI’s opposition decisions are appealable before specialised courts of appeal, within one month of the notification of the decision if the appellant is French, and within three months if the appellant is not from France. The territorial jurisdiction of these appellate courts is determined by the domicile of the appellant; the Paris Court of Appeal has exclusive jurisdiction where foreign appellants are concerned.

The recent changes to the law should apply to oppositions against a trademark application filed after the entry into force of the implementing decree (ie, 11 December 2019).

Withdrawal

The applicant may request, in writing, the complete or partial withdrawal of its application at any point in time until the technical preparation for registration begins.

Registration

Unless the application is rejected or withdrawn, the mark is registered in the National Trademarks Register for 10 years from the filing date. Registration of an unopposed application takes approximately four to five months from the application date, while registration of an opposed application takes about 10 to 11 months. INPI issues the registration documents about two to three weeks after the registration.

Renewal

Registered trademarks are renewable every 10 years, by declaration. At the renewal, the owner of the trademark shall not modify the sign nor extend the list of goods or services. However, the renewal may apply only for part of the goods or services stated in the initial registration. Proof of use is not required for renewal.

A renewal declaration should be submitted to INPI in the six months preceding the expiry of the registration. An application for renewal may also be filed within an additional six-month period, upon payment of additional fees. Renewal shall take effect on the day following the expiry date of the registration. INPI issues the renewal documents about two to three months after the renewal.

Removal from register

Cancellation: The validity of a registered mark may be challenged through a cancellation action or in infringement litigation:

• on absolute grounds (impossibility of graphic representation;
• absence of distinctive character and descriptiveness; unlawful signs); or
• on relative grounds – namely, earlier rights.

Acquiescence: If the owner of a trademark has acquiesced to the use of a later identical or similar mark for five successive years while being aware of such use, and if the later mark was applied for in good faith, the owner of the earlier right shall no longer be entitled to act against the use of the later mark in respect of the goods or services for which the later mark has been used.

Revocation for non-use: If, within a successive period of five years starting on the publication of registration, the mark has not been put to genuine use in connection with all or part of the goods or services for which it is registered, and there are no proper reasons for non-use, the rights of the mark owner shall be revoked. Such revocation can be invoked by any interested party or as a counterclaim in infringement proceedings.

In this respect, use of the mark in a modified form that does not alter its distinctive character is considered genuine use.

The owner of the mark for which revocation is requested bears the burden of proof of genuine use of its mark. Evidence of use shall be provided for all goods or services for which the trademark is registered. Failing that,…