1. Introduction to the French/EU Trademark Registration Procedure
In France, trademark ownership can be obtained by registering a French trademark with the French National Institute of Industrial Property INPI, a European Union trademark with the European Union Intellectual Property Office EUIPO, and an international trademark with the World Intellectual Property Organization WIPO, which can designate France or the European Union. The registration period is 10 years and can be renewed indefinitely.
INPI will review the registrability of the trademark application on absolute grounds and the registrability of the opposition raised by the third party on relative grounds and then grant the registration.
In France, a trademark can consist of names in all their forms (such as words, word combinations, surnames and place names, pseudonyms, letters, numbers, abbreviations) as well as audible signs such as sounds or musical phrases. Graphic signs can also be registered as trademarks, such as devices, labels, seals, reliefs, holograms, logos, composite images; shapes, especially the shape of a product or its packaging, or the shape of a service; or arrangements, combinations or shades of colors. For example, the pattern of the red sole of a Louboutin shoe can also be registered as a trademark.
Both French and EU trademark applications can be filed by one or more legal or natural persons, by a French person, by a foreigner, by a national of a WTO member country, or by a foreigner residing in France. The applicant for trademark registration must provide a trademark design and list the goods and services covered by the trademark. A third party may raise an objection within two months after the publication of the preliminary trademark announcement.
INPI and EUIPO only examine absolute grounds for refusal, evaluating both the sign and the goods and services specified. INPI does not search for previous potentially conflicting trademarks. Before EUIPO begins publishing, the applicant for trademark registration may request to amend or withdraw the application in whole or in part. Such requests must be made in writing.
The trademark registration procedure at the EUIPO is very similar to the French trademark registration procedure:
- Step 1: EUIPO examines whether the trademark registration application complies with Regulation 2017/1001
- Step 2: The list of goods and services for the trademark registration will be sent to the EU Translation Center in Luxembourg. The applicant can make a request to the EUIPO for a search report on potential conflicting trademarks, such as requesting to cover national trademarks, which is transmitted to the requested national trademark office. All reports will be sent to the applicant before the EUIPO considers the absolute grounds for refusal. After that, the application will be published in the EUTM Gazette. Oppositions or oppositions can be filed within three months after the publication of the trademark preliminary examination announcement.
Priority: After filing a trademark registration request with INPI, the applicant can file a trademark registration application in other countries within six months and enjoy the priority of the initial application date.
Duration of protection: For French and EU trademarks, registration takes effect from the date of filing the application and is valid for 10 years, renewable indefinitely.
Renewal: Renewal of a French trademark/EU trademark must be made within six months before the expiration of the trademark right. The protection period expires on the last day of the month in which the protection period expires. However, it can still be submitted within six months from the last day of the month in which the protection period expires, but a surcharge must be paid.
Application Fee:
- The fee for filing an application with the INPI for up to three classes of goods or services is €250 for a paper application and €210 for an electronic application. If the applicant chooses to file for more than three classes of goods or services, the additional fee for each class is €42. The renewal fee is the same as the application fee.
- The fee for a common EU trademark application for one class is €1,000 for paper applications and €850 for electronic applications. An additional fee of €50 is charged for the second class and €150 for each class starting from the third class. The renewal fee is the same as the application fee.
2. Prior Rights
Article L711-4 of the French IPC sets out a list of public rights that may constitute prior trademark rights: registered or well-known trademarks, company names, trade names, geographical indications, copyrights, industrial designs, third-party human rights (in particular surnames, pseudonyms or images), and the name, image and reputation of local public entities.
The assessment of prior rights depends on the rights invoked. For prior trademarks, company names and trade names, there is a high likelihood of confusion between these signs; for famous or well-known signs, the name, image and reputation of local public entities, the harm to the previous sign will be assessed. Regarding personality rights and domain names, it can be an assessment based on civil liability and therefore more generally an assessment of the damage to prior rights.
3. Objection Request
A third party may file an opposition within two months after the initial publication of the trademark. This period cannot be extended. The opposition/opposition procedure applies to:
- Owner of a previously registered or applied trademark
- Owner of a well-known trademark
- Trademark owner with an earlier priority date
- Exclusive Licensee
- Head of the competent authority for designations of origin and geographical indications
- Local public entities
Since May 2016, all opposition requests for trademark registrations in France must be filed online on the INPI website. The INPI will forward the opposition to the trademark application. The applicant has at least two months to respond to the opposition. If the trademark applicant fails to respond before the deadline, the INPI will make a decision directly. Both parties to the opposition have the opportunity to state their opinions. During the opposition procedure, the applicant can request evidence of use of the prior trademark if it has been registered for more than five years. The fee for filing an opposition with the INPI is 325 euros.
The opposition procedure for EU trademark applications must be filed within three months of the initial publication of the trademark. The opposition fee is 320 euros. After the EUIPO accepts the opposition request, there will be a cooling-off period during which the opposing parties can terminate the opposition procedure. Subsequently, each party to the opposition has two months to defend the case and can exchange evidence several times. The EU Intellectual Property Office will then decide on the opposition. If the opposition is successful, the trademark registration applicant will have to pay the other party's fees (approximately 650 euros); if the opposition fails, the opposition requester will have to bear the costs (approximately 300 euros). In the case of partial settlement, the costs will be shared by both parties.
IV. Invalidity Litigation
French trademarks can be invalidated in a court that specializes in trademark law and has territorial jurisdiction over the case. Any interested party can request a declaration of invalidity if the trademark lacks distinctiveness, is deceptive, violates public policy and public morals, or cannot be represented figuratively. However, if the trademark infringes on prior rights (trade name, surname, copyright), only the owner of the prior rights can file a lawsuit. Infringement lawsuits based on prior rights, whether copyright or trademark, as well as civil liability lawsuits (i.e. the right to a company name), can also be brought against the trademark in a specialized court and may result in its invalidation.
V. Trademark Property Claims
If a party believes that a trademark application was made by fraudulent means, they can claim ownership of the trademark. The preliminary review process lasts about 9-18 months.
VI. Appeal
The trademark registration applicant may appeal the INPI's decision to reject the trademark, or he may file an appeal with a specialized appeal court with jurisdiction over the applicant's place of residence within one month of the decision. If the appellant is a French citizen, the deadline for filing an appeal may be extended by one month, and if the appellant is a non-French citizen, the deadline for filing an appeal may be extended by two months. The appeal hearing will usually last 4-12 months.
