17 Mar
2020

Trademark procedures and strategies: France

PROMARK

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, the mark will be revoked for the goods or services for which genuine use was not proved.

If use of the mark started or resumed within three months of the request for revocation, after the owner of the mark has become aware of a request for revocation against its mark, such use shall be disregarded.

Revocation shall take effect retroactively as of the date of expiry of the five-year period mentioned above.

Revocation if mark becomes generic: If a mark has become the common name in trade for a product or service for which it is registered, its owner’s rights shall be revoked for such good or service.

Revocation of a misleading mark: The registration of a mark shall also be revoked if the mark has become misleading, particularly as regards the nature, quality or geographical origin of a product or service.

Surrender: A registered mark may be surrendered at any time in respect of all or part of the goods or services for which the mark is registered.

New provisions enter into force on 1 April 2020, including the following:

  • INPI has exclusive jurisdiction for revocation actions, whatever the grounds (eg, non-use or trademark becoming generic or misleading) as a main claim.
  • INPI has exclusive jurisdiction for cancellation actions as a main claim that are grounded only on:
    • one or several absolute grounds; or
    • one or several relative grounds related to the infringement of:
  • an earlier distinctive sign;
  • a legal or trade name;
  • a shop sign;
  • a domain name;
  • a geographic indication;
  • the name of a public entity; or
  • the name, image or reputation of a territorial collectivity or public inter-municipality cooperation establishment.

French specialised IP courts will remain competent for counter-claims and invalidation or revocation actions grounded on any other rights (eg, copyrights, design rights or any related claim such as counterfeiting or contractual liability).

The decisions rendered by INPI could be the object of an appeal.

Enforcement

Anyone that uses a mark without the authorisation of its owner, by reproducing the mark or imitating it for identical or similar goods or services, shall be liable for trademark infringement.

In order to determine an infringing act, the court must assess:

  • the identity or similarity of the conflicting signs based on visual, phonetic and intellectual criteria; and
  • the identity or similarity of the goods or services concerned.

Civil infringement proceedings can be brought before specialised courts by either the owner of a mark or the exclusive licensee, if the licence is recorded in the Trademark Register. A licensee whose licence agreement has not been recorded can intervene in infringement proceedings only to claim remedy for damages that it has suffered.

An infringement action must be brought within five years of the infringement.

Such infringement may be proved by any means. To secure evidence of the infringement and to obtain any information related to it, the rights holder may obtain from a competent court an order to carry out a seizure at the premises of the alleged infringer.

Prior to an infringement action, the rights holder can also request an injunction in order to prevent an imminent infringement or any further infringement, by means of summary proceedings. Such proceedings may be ex parte if the circumstances require that such measures be issued without the defendant being heard.

Ownership changes and rights transfers

In order to be enforceable against third parties, the following information should be recorded in the Trademark Register:

  • information relating to the owner and the mark, as well as acts affecting the existence or scope of the mark;
  • acts affecting the ownership or enjoyment of the rights on the mark (eg, assignment agreement); and
  • changes of name, legal form or address of the owner.

The recordation of a licence is not compulsory, but it is useful for evidentiary and opposability purposes and for the licensee to be able to act in infringement litigation or in opposition.

The applicant of such recordation will provide INPI with a copy or an abstract of the deed stating the change in ownership or use of the rights (not legalised, but translated into French).

Related rights

Trademarks and other IP rights can overlap. Thus, subject matter may be protected as a trademark, by copyright or as a design if it satisfies the requirements for such protection.

Online issues

Under French law, unauthorised use of a trademark on the Internet also constitutes trademark infringement. The rights holder may sue those that unlawfully use its mark on the ground of trademark infringement or unfair competition.

According to case law, the French courts have jurisdiction over infringements on websites that are intended for French consumers (depending on the language, the currency or the measurement units used on the website).

Law 2004-575, which implements the EU E-commerce Directive (2000/31), establishes liability regimes applicable to internet access providers (IAPs), hosting service providers (HSPs) and website editors in case of an illegal act on the Internet, including trademark infringements.

Article 6.I.2 of Law 2004-575 defines ‘HSP’ as the natural or legal person who, for the provision to the public through online public communication services, stores signals, writings, images, sounds or messages of any kind.

By virtue of Article 6, IAPs and HSPs have no general obligation to monitor the information that they transmit or store, or actively to seek illegal activities. They are liable only if they knew of the illegal act or if they did not act promptly in order to delete the illegal content or make the content inaccessible when they became aware of it.

As to domain names, the ‘.fr’ naming rules provide expressly that it is the responsibility of the person registering or using the domain name to ensure that it does not breach third parties’ rights.

A dispute resolution procedure called Syreli is available for disputes over ‘.fr’ domains, in addition to judicial actions. This system is managed by AFNIC, the registry of the ‘.fr’ top-level domain; decisions are issued within two months of receipt of a complaint.

PROMARK

62 avenue des Champs Elysées

Paris 75008

France

Tel +33 156 596 080

Fax +33 156 596 088

Web http://www.promark.fr

Alain Berthet

Partner

[email protected]

Alain Berthet is the founding partner of PROMARK, which he established in 1991 after starting his practice in 1984. He holds a postgraduate degree in IP law from the University of Paris-Pantheon, where he taught trademark law for 12 years.

A member of the Paris Bar, he has extensive experience with trademarks, designs, copyright and domain names, and advises national and international clients in France and before the EU Intellectual Property Office, the French courts and the European Court of Justice.

Bénédicte Devevey

Partner

[email protected]

Bénédicte Devevey holds a master’s degree in industrial property law from the University of Paris-Pantheon. After qualifying in 1983, she worked for various specialist IP firms in Paris as an IP legal consultant in trademark and industrial design law, before joining PROMARK as a partner in 1996. She is a member of the Paris Bar.

Her areas of expertise include trademark and industrial design law, copyright, domain names and unfair competition.

Aline Mugard

Partner

[email protected]

Aline Mugard graduated with a master’s degree from Paris Assas University in 2007 and was admitted to the Paris Bar in 2011. She joined PROMARK in 2015 after working in several IP law firms.

Her areas of particular experience include trademark law, copyright law, unfair competition, entertainment law and commercial law. Her practice includes both litigation and advice in these areas.