To obtain trademark protection in France, one can either file a local application or a European Union trademark.
Local applications are filed through the Institut National de la Propriété Industrielle (INPI), and automatically grant protection in Martinique, Guadeloupe, St. Barthélemy, French Saint-Martin, French Guiana, Reunion Island, New Caledonia, Wallis and Futuna Islands, Mayotte, Saint-Pierre and Miquelon and the French Southern and Antarctic Lands. The trademarks may be extended to the French Polynesia.
European Union Trademarks (EUTM) offer protection in France as well as all the other member countries of the European Union.
If you register a combined trademark (which includes both word elements and figurative elements) in France, the exclusive right to use the trademark is limited to a use of the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.
Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity. Probabilities of success for an opposition will vary in each case depending on the circumstances.
After the application has been filed, the INPI will simultaneously publish it and begin the examination to check whether the trademark is acceptable for registration. The INPI does not check the existence of identical or confusingly similar filed or registered trademarks.
During the publication period of two months from the publication date, third parties can file both oppositions based on a prior right (for instance, a previously registered trademark) or observations based on absolute grounds (for example, that the proposed mark is merely descriptive).
France is a “first-to-file” jurisdiction, which means that except in some specific cases, the rights to a trademark are granted to the first person to file it, not the first person to use it. Use of the trademark before registration is not necessary and will not help overcome objections raised on grounds of lack of distinctiveness.
Although it is not necessary to use the trademark for it to register, it must be used within a period of 5 years since the last use, otherwise it will become vulnerable to cancellation for non-use. The amount of use in France must be on a commercial scale.
A trademark is registered for an initial period of 10 years starting from the date of filing of the application, after which it can be renewed for periods of 10 years. The renewal request can be filed starting 6 months before the expiration date, and until 6 months after the expiration date. In case the renewal is filed after the expiration date, extra costs will apply.
France is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.