Filing of trademark applications in France | Filing of trademark applications in Europe

Filing of trademark applications in France

The trademark can be a verbal and/or figurative mark.

It is possible to claim colors, by their arrangement, their combination or their shade (or hue). In the case of a sole colour, it is recommended to claim a color by its code such as ' Pantone pink 219 ', rather than by its description such as 'fuchsia pink' which may be considered as invalid. The trademark can be also a sound mark which must be graphically represented (a stave, a spectrum..). It is possible to precise for example the used instruments or to describe the sound (for example : the roaring of a lion). A three-dimensional mark may be also possible by filing a planar representation is necessary (photograph, synthesis picture...).

We do not need any power of attorney for filing a trademark application In France.

During the French Office examination procedure, no anteriorities research is done. As the application of a trademark in France is considered as an act of infringement, it is important to conduct a search before filing, at least within the registered trademarks.

The registration application has to contain the applicant identification, the trademark, the product(s) and/or service(s) to which it applies and, when it occurs, the claim of a foreign application priority.

The application is published in the BOPI (Official Bulletin of Industrial Property) within about 6 weeks from the filing date.

The French Trademark Office may ask to specify the designated products or to include a class which contains some of the designated products, without extending the application scope. The French Trademark Office may also refuse a sign for its lack of distinctivity.

In case of irregularities, the applicant has a time allowed by the French Office (generally 1 month) in order to regularize his application or to contest the observation.

Within a 2-month period from the Trademark application publication, the owner of a prior trademark can file an opposition against the trademark application. This opposition is notified to the applicant which can reply by formulating observations (within a time period longer than 2 months allowed by the French Trademark Office) according to a procedure in which all parties shall be heard.

If the opposed trademark was filed more than 5 years ago, the applicant may ask in his first answer for use evidence, in order to establish if the opponent may be liable to revocation of his rights (for non genuine use of his trademark during an uninterrupted period of 5 years). In the absence of evidence, the opposition is rejected.

A decision draft is established by the French Trademark Office. It can be contested by both parties. In the absence of contestation, this draft becomes decision.

The trademark registration is notified to the applicant and published in the BOPI. The trademark is registered for 10 years, from the filing date, and is renewable by 10-year periods.

Without any further requirements, protection of a Trademark in France gives also rights in the 'Overseas Departments' (Guadeloupe, Martinique, Reunion and French Guyana), in the 'Overseas Territories' (French Polynesia, Wallis and Futuna, the French Austral Islands and the French Antartic territories), in the 'Territorial Collectivities' (St Pierre and Miquelon, Mayotte) and in New Caledonia and dependencies.

It is highly recommended to watch up the filing publications of trademarks having effect in France : French trademarks, Community trademarks and international trademarks designating France. We can follow these publications and warn you when an opposition may be done against the registration of an identical or similar trademark application.

Filing of trademark applications in Europe

Our Firm represents applicants before the Office for Harmonization of Internal Market for filing European Community trademarks and their prosecution, for filing oppositions or cancellation request of CTM or of international trademarks designating the European Community.

For the prosecution of a CTM, a first language of the application proceedings has to be selected from the 22 official languages of the European Community. A second language has to be selected which must be one of the five languages of the Office (English, French, German, Italian or Spanish) and which must be different from the first language. The second language will be used by OHIM in communicating with the applicant or his representative where the first language is not one of the five languages of the Office. The second language is also the language, or one of the languages, available for opposition and cancellation proceedings.

Filing a Community trademark has the advantage of being a sole procedure resulting in a trademark having effect in the 27 countries of the European Community.

OHIM conducts a search among the Community trademarks. It is also possible to request that the search be done by a group of National Offices.

OHIM issued a search report but not examine this report. As the search report does not take into account all the countries, it is useful to conduct a preliminary search among the national, international and community trademarks having effect in the E.C.

Less than one month after the official notification of the search report, the application is published. An opposition may be filed within a 3-month period from the publication of the application by third ones. Any kind of prior rights (i.e. not only a prior mark but also a company name, a name, an unfiled used mark, etc.) may be opposed, even if this right has effect only in one country of the E.C. if this right is opposable to trademarks according to the national law.

The opposition procedure begins with an extendable 2-month period of 'cooling-off'. During this period, the opponent and the applicant may try to reach an agreement by their own. For example, a limitation to specific products without the OHIM intervention can stop the opposition procedure.

It is possible to file a division of a CTM application. For example in case of an opposition regarding some of the designated goods, it is possible to divide the application in order to obtain the registration of the goods which are not the object of the opposition.

The division will keep the filing date of the original application. The division is subject to an official fee. Renewal fees will have to be paid for two different trademarks.

From 01/05/2009, no more registration fee must be paid. The Certificate of registration is issued directly.

A cancellation (or revocation or invallidity) procedure may be filed by any third within no time limit in order to revoke a CTM for non use or for absolute or relative grounds.