France trademark registration

General principles

The trademark registration system in France is very similar to the European system.

However, one common mistake is to assume that a trademark is protected as soon as it is used in commerce. Whilst this is true in a Common Law system, it is not the case in a Civil Law system (in France and Germany for example).

In a Civil Law system, the owner of a brand that is not registered as a trademark may have rights to sue the user of a confusingly similar posterior sign based on unfair competition law. This is no longer true when the user of a similar posterior sign registers that sign as a trademark. In the latter case, the prior owner becomes the infringing party, unless he can demonstrate that the trademark was registered in bad faith. This proves to be very difficult, if not impossible, in most cases.

In conclusion, it is highly advisable to register a trademark in all countries where the sign is used in commerce, in order to avoid later difficulties.

MAS LEGAL provides BrandToBe trademark search and registration package for your French trademark registration.

Procedure

Foreign companies or individuals not residing in the European Union or in the European Economic Area cannot directly apply for the registration of a trademark in France. Instead, they must choose a European based trademark Attorney who will represent them. The trademark Attorney will receive correspondence sent by the office and will advise the client.

Trademark registration in France is effective for 10 years. It may be renewed for a further period of 10 years upon payment of the prescribed fees.

Six weeks after filing, the French intellectual property office (INPI) will publish the trademark in the French trademark Bulletin (BOPI).

The INPI will examine the registration application within a delay that varies from one or two weeks to a few months. The INPI may raise objections to the trademark registration.

If no opposition is made to your trademark application and no objections remain, your trademark will be registered and published. A trademark registration certificate will be sent by the INPI to your attorney.The trademark will be valid for a period of 10 years, and may be renewed for 10 years, as many times as you like. Unlike patents, there is no limit to the duration of a trademark if it is renewed in time every ten years.

Freedom to operate in France

In order to launch a new brand or target new markets, it is important to verify your freedom to operate. BrandToBe® includes a trademark search and registration package for France.

BrandToBe® is designed to research and analyse new brand availability. We prepare a full risk assessment, conducted by legal experts.

How does BrandToBe^® work?

We conduct availability searches on proprietary databases. We assess a broad range of Intellectual Property rights that might prevent exploitation (trade names, marks used in commerce, domain names, company names, copyright, etc.). We assess the pros and cons of a particular brand name compared to alternates. We propose mitigation solutions if we find obstacles and risks to the registration of your trademark.

Filing your trademark in France

If your brand is available for registration or if our lawyers find a suitable mitigation strategy, we will prepare and file your trademark application in France at no additional cost (terms apply).

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