1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in France. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
No. Registration is not compulsory, but it is strongly advisable because it is necessary to establish rights to a mark, since prior use is not recognized. As discussed below, the legal benefits of registration may not be available otherwise.
3. What is registrable?
Any 搒ign?that can be reproduced graphically and is capable of distinguishing the goods or services of one person from another, e.g., words, names, devices, certain three-dimensional shapes, colors, and sounds, is registrable.
4. Can a trademark be registered for retail and like services?
Yes but with some restrictions.
5. How are domain names protected?
Domain names are protected by the registration of the domain with the national domain name authority on a first come, first served basis. In general, the courts apply the same principles for domain name disputes as are applied for trademark disputes. No specific legislation is currently in force for the protection of domain names.
6. Should a trademark be searched before filing?
Yes. In France, there is no official search for prior marks and, therefore, a prefiling search by the applicant is recommended to establish whether valid rights in a mark can be secured. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting a trademark attorney or an attorney at law (avocat).
8. What information must be provided before filing?
Before filing, an applicant must provide one specimen of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered.
9. Is local registration the only option, or are there international alternatives?
France acceded to the Madrid Agreement in 1892 and to the Protocol in 1997.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay additional class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a French application, the filing date of the home application can be claimed as the filing date in France. A Community or International registration can be based on a French registration (see the entries for the Madrid Agreement and Protocol and the Community Trade Mark). Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date; consult a French trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to revocation for nonuse. However, late use after five years may cure nonuse, provided that in the interim no third party has filed an action for revocation for nonuse.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form will not affect registration.
14. Is there any advantage to using a trademark before filing an application?
No. Prior use is not recognized.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone may apply.
16. What information is first published about an application/ registration and when is it published?
A trademark is published after formal examination. It is published for opposition purposes within six weeks after the application.
17. What kind of examination (if any) will a new application undergo?
There is no official search in the course of the registration proceedings. The application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness.
18. What response to official objections is required?
The applicant is entitled to reply to the examiner抯 objections within the term set.
19. How long is the registration process?
In the absence of objections and oppositions, the registration process takes approximately five months from the filing date.
20. What rights does an application confer?
The applicant can use an application to oppose a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant can sue for infringement and invalidation of subsequent registrations and can file oppositions against new applications.
22. Can an application be opposed or cancelled by third parties?
Yes. There is a non-extendible two-month period from publication within which third parties may lodge oppositions based on their prior trademark rights. After the opposition period, a cancellation action can be taken.
23. Can an application or registration be assigned?
Yes. Applications and registrations may be assigned for all or some of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
No. However, recordation is advisable. Any transfer or modification of rights in a registered trademark shall only have effect against others if recorded in the National Register of Marks. An assignment must be recorded for the transfer or the modification of rights to have effect against third parties or for renewal of the assigned trademark to be legally made by the new owner.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, for both an application and registration, for all or some of the goods/services covered, and for all or part of the state territory.
27. Does a license have to be recorded?
No. However, recordation is advisable. Any transfer or modification of rights of a registered trademark shall only have effect against others if recorded in the National Register of Marks. Moreover, the exclusive licensee can oppose or act against infringement in certain circumstances when the license has been recorded.
28. What is the territorial limit of a registration?
A French trademark registration extends to metropolitan France, including Corsica; overseas departments: Martinique, Guadeloupe (including Saint-Barthelemy and the French part of Saint-Martin), French Guyana, Reunion; overseas territories: French Polynesia, New Caledonia, Wallis and Futuna, French Antarctic Territories; and Mayotte and Saint-Pierre et Miquelon.
29. How long does a registration last?
The term of registration is ten years from the filing date, and is renewable for like periods.
30. What is required to renew a registration?
The acting trademark attorney may file a renewal declaration, and pay the renewal fees.
31. Is it necessary to indicate a trademark registration on goods or services?
No. Marking is optional, e.g., 揗arque enregistr閑.?/span>
32. Does the International Classification System apply?
Yes.
33. Is your national office accessible online?
Yes, please visit www.inpi.fr. |
