Trade mark Registration in France: An overview The trade mark registration in France has taken a broad perspective where the necessity to be represented graphically has been done away with by the law. Now, every sign that is capable of being represented in the national trade mark register using the commonly available technology in a clear, precise, distinct, intelligible, easily accessible, objective and durable manner can be trademarked according to French law. This amendment has allowed non-traditional signs such as sound, motion, multimedia, and patterns to be registered as trade marks. However, it must be noted that smell and taste have not been permitted to be registered in the national trade marks register because of the absence of a proper medium of representation for these signs. If you are not sure whether your mark is eligible to be granted a trade mark, then speak to the trade mark consultants at Enterslice. The legislation governing the regulation of trade marks in France is found in the First Title of the 7th Book of the Intellectual Property Code (IPC). Apart from this, there are several other sources of trade marks legislation which can be found in the Civil Code, Penal Code, Civil Procedure Code (CPC) and the EU regulations and directives. Authority for trade mark registration in France The relevant authority for the purpose of registration of trade marks in France is the National Institute of Industrial Property (INPI or Institut National de la Propriete Industrielle). INPI is responsible for the examination of the trade mark applications filed and decides on the opposition proceedings filed by the owner of the prior rights. It can also intervene in the application process of international trade marks through World Intellectual Property Organisation (WIPO). Apart from registering the trade mark, INPI, along with the French Trade marks courts, have the competence to decide on the revocation of the trade mark or declaring the mark invalid. The trade mark courts have exclusive jurisdiction in infringement proceedings. As far as European trade marks are concerned, Paris is the competent EU trade marks court. Reasons for the refusal of Registration of trade mark in France The following signs cannot be trademarked in France if: If the said mark lacks distinctiveness, i.e. it lacks arbitrariness in relation to the goods and services designated; Descriptive marks: if a mark consists of elements that designate a characteristic of the services or goods and also the quality, quantity, intended purpose, geographical origin, value, or time of production of goods or provision of services. As long as the evocative trade marks do not designate a characteristic of a good or service, they can be trademarked. If the mark composes of elements that have become customary with the current trade practices or in language; If a mark is excluded according to Article 6 of the Paris Convention; If the mark is prohibited by law or contrary to public policy. Here, the court, while interpreting the moral values, does take into account the fundamental moral values and standards to which the society adheres, which have undergone changes over time and space; If the mark is misleading with respect to the quality, nature or geographical origin of the services and goods; If the mark consists of the prior plant variety’s denomination; If the mark has been filed in bad faith; If the mark infringes the prior rights, and in particular, a trade mark that has been registered earlier or a trade mark application with repute, a trade name, a well-known mark, a company name, a domain name, a signboard, a geographical indication, personality rights, rights deriving from a protected design, copyright, the image/repute/name a local authority or a public intercommunal cooperation institution and a public entity name. How are the trademarks represented in France? Trade marks in France can be represented in the following ways: Word marks: representation of word marks does not cause any difficulty. Where the term is in a foreign language, its translation must be mentioned. Figurative and semi-figurative marks: a file containing the picture or image of the trade mark must be attached to the application. Marks containing a shade or a combination of colours: the colours must be described in the application. The pantone colour code, along with the exact composition, must be mentioned in the application. Holograms: the application should contain one or more images or pictures of the holographic element, excluding the hologram; 3-D marks: the 3D marks should be represented by a design or by a photograph of the product. The distinctive character of the 3D mark can be discussed as the consumers may not be able to easily identify the packaging or shape as an indication of the origin of services and goods. Audible marks: audible marks should be represented by a musical stave. Multimedia marks: multimedia marks must be represented by MP4 media. Sound marks: sound marks must be represented by MP3 media. Motion marks: Motion marks must be represented by MP4 media. Step-by-step procedure for filing a Trade mark application in France Following is the 8-step simple application procedure for filing an application for Trade mark Registration in France: Designing of a trade mark Determining the classification of goods and services to be trademarked Conducting a Pre-Filing trade mark search Filing the application for ownership of the trade mark Filing of the trade mark application with the INPI Examination of the mark by INPI Publication of the mark and opportunity for opposition and observations Registration of trade mark Designing of a trade mark - Designing a trade mark is the primary step in the process of trade mark registration in France. The trade mark should be designed according to the provisions of the IPC. It must be noted that after the recent amendments made into the French law, the necessity of graphical representation of trade mark has been done away with. Now, the new amendment only wants the trade mark to be represented on the trade mark register. This has allowed the registration of new types of marks, such as holograms, multimedia, sound, motion etc. However, the marks such as taste and smell have still not found a place because they do not have any medium to be represented on the register. Determining the classification of goods and services to be trademarked - It must be noted that trade mark protection is offered in relation to certain goods and services. Therefore, it becomes necessary to determine the goods and services under which the applicant wants to obtain trade mark, as this will decide the relevant class of the services and goods under the NICE classification. One must remember that trade mark protection can be granted against only a set of goods and services and not beyond that. Therefore, the trade mark experts at Enterslice emphasize that the application should cover the maximum number of classes. Conducting a Pre-Filing trade mark search - Conducting a pre-filing trade mark search is not mandatory under French law. However, in order to avoid delays on account of deficiencies pointed out by the INPI or objections and observations made by third parties, it is advised by the trade mark experts at Enterslice that a pre-filing trade mark search should be carried out before filing the application because once the application has been filed, major changes cannot be made in the application. Conducting a pre-filing trade mark search helps to find out similar trade marks already registered under the same classes, and the applicant can make changes in the application or design before filing the application with the INPI. Filing the application for ownership of the trade mark - A trade mark application can be filed by either a natural person or a legal person such as a civil or commercial company, an association, a territorial collectivity or the government itself represented by one of its ministries. It is necessary that the applicant making the application is either domiciled or established in France or in an EU member state or in a member state of the European Economic Area (EEA). A person who is a citizen of a Paris Union Member State, a WTO member or a country that is related to France through a bilateral convention can file an application for trade mark registration. A trade mark in France can be held by a natural or legal person or, conversely, on a co-ownership basis also. Filing of the trade mark application with the INPI- Once the ownership over the mark has been decided, and all the required documents and information mentioned below have been compiled, the process of filing the form begins. It is advised that before filing the application, the applicant must take assistance from the trade mark experts at Enterslice as after filing the application, substantial amendments cannot be made in the application. After filling in the required details, the registration application is filed for examination with the INPI, along with the attachment of the proof of payment of fees. Examination of the mark by the INPI - After filing the application, the INPI reviews and examines the application to find out whether the application fulfils all the requirements for registration and also checks whether the mark falls within the absolute grounds of refusal or not. On satisfaction of the INPI that the application is fit enough to go to the next stage of the registration process, it publishes the application within a period of 6 weeks (or 1.5 months) from the date of filing the application. In case the INPI finds any non-compliance at the stage of the examination, then INPI notifies the applicant about the objections raised and grants a delay/time to the applicant to either make amends in the application or respond to the observations made by the INPI. Publication of the mark and opportunity for opposition and observations - After the stage of examination and reviewing the application, the INPI publishes the application within a period of 6 weeks. The publication is made for a period of 2 months, allowing any 3rd party to make observations or objections with respect to the trade mark. The opposition can be made by either of the following: The owner of prior trade mark application or registration; The owner of an earlier well-known trade mark; The holder of a company name; The beneficiary of an earlier exclusive right of exploitation unless otherwise stipulated in the contract; The holder of a trade name or signboard; Any person who is entitled to protect a geographical indication; The holder of a domain name; The owner of the trade mark where the trade mark has been filed in the agent’s name without authorization; and A territorial collectivity or a public intercommunal cooperation institution. The application of opposition can be filed on the INPI’s website within a period of 2 months from the date of publication of the trade mark application. Any 3rd party has the power to file observations on the validity of the application. However, if no opposition is filed, then the INPI shall allow the registration of the trade mark within a period of 6 months from the date of filing of the application, publish the registration and finally issue the certificate of registration to the applicant/owner. Registration of the trade mark - Upon registration of the trademark, the INPI publishes the trade mark registration in the Official Bulletin of Industrial Property, and the applicant or the owner of the trade mark is issued a Certificate of Registration. The rights of the trade mark owner over the trade mark commence from the date of filing of the application. The rights conferred on the applicant/owner as a result of trade mark registration are enforceable against the 3rd parties after the publication of the trademark or notification to the 3rd parties. It must be noted that prior to registration, a trade mark applicant has the following rights: The applicant has the right to file opposition proceedings against another trade mark application; and The applicant can also start infringement proceedings, being satisfied that the court will stay the proceedings until registration. What are the contents of an application for Trade mark registration in France? An application for the registration of a trademark in France should contain the following information and the following documents should be attached: Identification of the applicant; whether the applicant is a natural person, mandatory information includes the full name and address of the trade mark applicant and title; or in case the applicant is a legal person, then the mandatory information to be provided includes the company name, its legal structure/form and its full address; The specification of the goods and services and their corresponding classes; A representation of the trade mark; Whether a priority right is claimed or not; Information about the representative where the representative is making the filing of the application (such as a trade mark attorney; for example) and Power of Attorney has to be attached; Evidence of use where the distinctiveness of the mark has been acquired through use; Proof of payment of the applicable fees; In the case of a collective mark or a certification mark, the regulation has to be mentioned defining the conditions to which the use of the trade mark is subject to; and In case the application for registration has been filed by a foreigner who is not domiciled in France, evidence that the trade mark has been filed in the domiciled country and that the said country protects French trade marks. Cost for the registration of Trade Marks in France The cost of filing a trade mark in France depends on the number of class services and goods designated in the application. The fee for making an application for the registration of a trade mark for one class is 190 Euros. For every additional class, the cost increases by 40 Euros. In case the jurisdiction of French Polynesia has also been chosen, then an additional fee of 60 Euros shall be applicable. The cost of renewal of a trade mark in France costs 290 Euros for one class. For each additional class, an additional amount of 40 Euros has to be paid, and 60 Euros shall be paid if the territory of French Polynesia has also been chosen. Renewal of a trade mark in France According to the relevant provisions of the IPC, a trade mark in France can be renewed indefinitely for an additional period of 10 years. In order to renew the trade mark, the applicant has to file a declaration one year before the expiry of the term of the trade mark. In case the applicant is not able to renew the trade mark within the given time period, then it is provided with a grace period for an additional 6 months within which it needs to get the renewal done. However, to avail this grace period, the applicant has to pay a supplemental fee of 125 Euros. The fee for a renewal is 290 Euros for one class and an additional fee of 40 euros for each additional class. In case the jurisdiction of French Polynesia has also been chosen, then an additional fee of 60 Euros has to be paid. Failure of the above mentioned fee on time may result in the lapse of the trade mark in France.