Contributed By Reed Smith LLP
In France, trade marks are based on statutory law (French Intellectual Property Code). Several types of trade marks exist, such as:
Trade marks can be recognised by case law to have a reputation or to be famous, but case law does not create the status of such reputation or fame which has to be proven every time the marks are enforced.
A trade mark right can only be constituted by a registration. The only non-registered trade marks that are recognised by French law are the well-known trade marks in accordance with Article 6 bis of the Paris Convention. There is no standard for registering different types of marks, except for guarantee and collective trade marks, which have to be filed along with their regulations of use.
The French IP Office (Institut national de la propriété industrielle, INPI) holds one single national register for trade marks (Registre national des marques), which is publicly available.
It is standard practice to search for prior trade marks before filing a trade mark application. Searches should be conducted in the trade mark registers (French and European Union), corporate name registers, domain name registers (see 1.4 Registration Requirements).
Availability searches have to be performed prior to any filing to limit the risk of oppositions.
The applicant, in order to register a trade mark, shall give its identity, a list of goods and services for which protection is sought and any representation of the trade mark that will allow any person to determine precisely and clearly the scope of protection.
A registration fee has to be paid; in 2020 the fee is EUR190 for the first class and EUR40 for every additional class).
For collective and guarantee trade marks, special requirements apply, such as providing the INPI with a copy of the regulation of use.
Any individual or legal entity, provided that they have a legal capacity, can register a trade mark, even a company which is in the process of being constituted.
Trade marks can take various forms such as a word, a slogan, numbers, a logo, a colour, a design, a shape, a sound and/or a combination of images and sounds, multimedia, video and holograms.
The INPI publishes the application within six weeks from the trade mark application, after having examined that the application meets the formal requirements and is not subject to any absolute ground of refusal.
Within two months following said publication anyone can present observations, before the Director of the INPI, on possible grounds of refusal of the application and/or oppose against the application on the basis of one or multiple prior trade marks, company or trade names, shop signs, domain names, geographical indications, names, images or renown of a public establishment or territory, a public entity name or a prior trade mark registered in a state member of the Paris Convention when the agent or representative of the trade mark’s owner has filed an application in France without prior authorisation of the owner of the trade mark. For trade mark applications published prior to 11 December 2019, oppositions could only be opposed on the basis of one single trade mark.
If all the requirements are met and no opposition is filed or successful, the trade mark application is registered and published by the INPI in the Bulletin of Industrial Property (Bulletin officiel de la Propriété Industrielle).
There is no possibility to register series marks in the same application.
The INPI can refuse a trade mark which:
Evidence of acquired distinctiveness through use before filing an application can be provided to the INPI to overcome objections based on:
Where the trade mark is refused for deceptiveness, the refusal may, in some cases, be overcome by limiting the designation of goods or services.
The INPI will not ex officio take into consideration prior rights.
Within two months from the trade mark application publication, third parties may file an opposition or submit observations before the INPI.
A notice of opposition may be filed by qualified third parties (ie, the owner or beneficiary of earlier rights).
The opposition is based on a single or several prior rights and is notified to the contested trade mark application owner, who can submit written observations and evidence within two months and can invite the opponent to justify that the prior trade mark has genuinely been used.
The proceedings are contradictory and lead to a public decision, unless the opposition or the trade mark application have been withdrawn.
Any person may file observations drawing the attention of the INPI to other regulations or facts affecting the validity of the application. These observations shall be based on absolute grounds for refusal only. This procedure is not contradictory, but the observations are communicated to the applicant. The office may refuse the trade mark application or suggest amendments to the applicant, as a result of the third-party’s observations.
At any time during the process of registration, the trade mark application can be revoked; the designation of goods or services can also be amended but only in the form of a limitation of the goods and services. The sign constituting the trade mark cannot be amended.
Material errors can be corrected by the applicant during the registration proceedings and after registration of the trade mark.
It is possible to assign a trade mark or grant a trade mark licence during the application process. If the trade mark is finally refused by the INPI, then the assignment or licence agreement will be null and void and any financial payment will have to be refunded.
When the trade mark application is assigned, the priority right has to be transferred explicitly if the assignee wants to exert the priority right.
Intent of use and actual use have no relevance under French law at the application stage.
When an objection is raised by the INPI against an application, its owner can respond within a deadline set by the INPI in the notification.
Appeal against refusal decisions of the INPI shall be lodged before the competent Court of appeal, ie, the Court of the place of domicile of the appellant. The grounds of appeal must be filed within three months from the notice of appeal (extended by one month for French overseas appellant and by two months for foreigners). The INPI must file its responsive brief within three months from the filing of the grounds of appeal.
The appellant must be represented and assisted by a lawyer registered by a French bar.
Use of the sign before filing trade mark application is not required.
The owner has to use its trade mark from the registration date. A trade mark can be subject to revocation for lack of genuine use in the absence of use for five consecutive years.
The trade mark application can be divided at any time before or after registration, when a cancellation/revocation action is ongoing against the goods and services to be divided.
Up to the start of the technical preparations for registration or after registration of the mark, the owner may proceed with the division of the initial application for registration or the initial registration.
The declaration of division can only affect the list of goods and services designated in the application or registration of the mark. However, it may not relate to the ones which are the subject of an opposition, application for revocation/cancellation.
Divisional applications or registrations have the filing date and, where applicable, the priority date of the original application or registration.
A French trade mark has a duration of ten years and is renewable indefinitely. The renewal must be done within the year preceding the term, but a grace period of six months exists, subject to payment of extra fees.
The right conferred by the trade mark does not entitle its owner to prohibit the use hereof in relation to goods or services which have been put on the market in the European Economic Area by the owner or with his or her consent.
However, the trade mark owner is still entitled in such cases to oppose any further commercialisation of the goods if he or she can show legitimate reasons for doing so, in particular where the conditions of the goods is subsequently altered or modified.
France has been part of the Madrid system since 1892.
Only purely material errors can be corrected upon request before the INPI. Substantial errors in the application cannot be corrected.
No update or refresh is possible.
Trade marks owners are not required to use any symbols to denote the registration of a trade mark (eg, ® or TM). There is no objection to their use.
Ownership of either a trade mark or an application may be transferred, in whole or in part. As per contractual law, the terms and conditions of the assignment are freely negotiated by the parties. However, some restrictions shall apply: a trade mark assignment shall be made in writing (on penalty of nullity); the title to be assigned shall be identified and the price shall be determined by the parties; and territorial limitations are not allowed (ie the rights are assigned for the entire French territory).
No specific procedure shall be followed for assigning a trade mark, except for its registration before the Office (see 2.3 Registration or Recording of the Assignment).
Any transfer or change shall be recorded with the INPI, in order to make it public and enforceable against third parties. There is no obligation per se to register the assignment, but failing that the assignee is not entitled to commence trade mark actions before Courts nor to file oppositions on the ground of the assigned trade mark, unless the third party was aware of the existence of the assignment. To proceed with the registration, it is necessary to fill in a request form, to attach a copy of the assignment and to pay the corresponding fees. The request is then examined by the INPI on a purely formal standpoint.
A trade mark can be given as a form of security, rights in rem, etc. The deed shall be made in writing (on penalty of nullity) and has to be registered with the INPI in order to make it public and enforceable against third parties. When the security relates together to a trade mark and a business, the deed must be registered with the competent commercial court within 15 days of the signature of the deed (on penalty of nullity).
There is no particular requirement for licensing trade mark rights. A licence agreement does not have to be in writing. The licence agreement shall identify the licensed rights, may be granted on an exclusive or non-exclusive basis, cover all or part of the territory and for all or part of the goods and/or services.
No specific procedure shall be followed for licensing trade mark rights.
There is no need to register a licence agreement but the recordal with the INPI renders the licence public and enforceable against third parties.
Under French law, perpetual licence is not admissible, a licence agreement may be entered into for a fixed term or an indefinite term until the termination by either party and in any case when the trade mark elapses or is cancelled or revoked.
No other specific criteria are required for the validity of a licence agreement.
An opposition can be filed before the INPI within two months from the publication of the trade mark application publication (not extendable) on the basis of one or more of the following prior rights having effect in France:
Entitled to file an opposition, directly or through a representative, are:
The designation of a common representative is mandatory in case of an opposition filed by several opponents. The appointment of a lawyer, registered with a French bar, or a trade mark agent is mandatory if the opponent resides outside the EEA. The official fees amount to EUR400 per opposition and EUR150 per additionally opposed right.
The opposition notice shall be filed online with the INPI and, within one month thereafter, shall be substantiated with a brief developing the opponent’s arguments. The Office notifies the opposition to the applicant who must reply within two months and can request evidence of use by the opponent of the opposed rights. Both the opponent and the applicant may reply two more times within one month of the adverse party’s brief. Oral hearing may be requested by each party or proposed by the INPI. The INPI’s decision shall be handed down within three months as from the notice of the end of the adversarial period; absent a decision within this timeframe, the opposition is deemed to be rejected. The procedure may be suspended in the case of events affecting the right grounding the opposition (revocation/cancellation, assignment, ownership claim) or of a mutual agreement of the parties (up to 12 months in this latter case).
An appeal may be lodged against the decision of the INPI before the Appeal Court of the appellant’s domicile, within one month from the notification of the decision by the Office. The procedure follows the rules of the common appeal procedure, namely each party shall submit a brief within three months from the notification of the appeal or previous briefs. The deadlines may be extended with one month if the appellant is a resident of a French overseas territory or department and with two months if the appellant is a foreign resident. Ultimately, each party and the INPI may lodge an appeal before the Supreme Court (Cour de cassation) against the Appeal Court’s decision.
An infringement action may be launched by a registered trade mark owner against identical and/or similar (or, in case of a well-known trade mark, non-similar) goods/services and against any identical and/or similar sign, regardless of the fact that it is filed as a trade mark or not.
An infringement action may be launched upon an unpublished application, provided that a notice be sent to the alleged infringer. In any event, the Court stays the proceedings until the trade mark application publication.
An action based upon an unregistered trade mark enjoying a reputation, pursuant to Article 6 bis of the Paris Convention, is considered under French law not to be an infringement, but a civil tort action.
An infringement action may be brought before civil courts (tribunal judiciaire) or criminal courts (tribunal correctionnel).
In general, the decisions of the INPI do not bind the courts.
Declaratory judgment proceedings are not admitted under French trade mark law.
Ten specialised Courts have jurisdiction over French trade mark matters. The Paris Court has exclusive jurisdiction over EU trade mark cases.
In some instances, trade mark matters may be referred to a criminal court (tribunal correctionnel); ten courts are competent in France.
In all cases, appeals are lodged before the relevant Court of Appeals. Ultimate appeals may be lodged before the French Supreme Court (Cour de cassation).
Prior to filing a lawsuit, the claimant shall attempt to resolve the dispute amicably (conciliation, mediation, etc). This obligation may be removed in case of legitimate grounds relating to the emergency of the circumstances of the case.
In the calculation of damages for trade mark infringement, account shall be taken distinctively to the negative economic consequences of the infringement, the moral damage, and the benefits realised by the infringer; nevertheless, a lump sum may be awarded to make up for the license fees which should have been paid by the infringer, without prejudice to indemnification of the moral damage.
It is mandatory for the parties to be represented by a bar-registered lawyer before the tribunal judiciaire.
Preliminary injunctions may be requested inter partes (or ex parte, in case of emergency or where the circumstances require it). The claimant shall bring reasonable available evidence of actual or alleged infringement or threat of infringement. The judge may order protective measures under financial penalties, such as discontinuance of the infringement, provisional damages, seizure of allegedly infringing products or other assets, and communication of documents. Should the measure be granted, the claimant shall file a lawsuit within 20 working days or 31 calendar days, failing that the interim measures are revoked upon request of the defendant who is entitled to claim for compensation.
No protective brief does exist under French law. The defendant may require a bond to be posted by the trade mark owner in the event of preliminary injunctions. Before any discussion on the merits regarding infringement, the defendant may challenge the admissibility of the claim (eg, the claimant fails to prove the use of its trade mark within the past five years; the defendant demonstrates that the claimant is not entitled to prohibit the commercialisation of the goods in the final country) or the validity of the claimant’s trade mark.
A first way to obtain relevant information or evidence is the so-called saisie-contrefaçon, requested ex parte in order to collect evidence of a suspected infringement at the place where the latter is committed. The purpose is to prove the extent, origin and destination of the infringement. The motion may be submitted before or in the course of an action on the merits. However, once the seizure has been performed, the claimant shall file a lawsuit (or brief) within 20 working days or 31 calendar days, failing that, and upon the defendant’s request, the seizure can be revoked and all documents and information must be returned to the defendant who is entitled to claim for compensation.
A second way is to file a motion for a “right of information”, in the course of an action. Unless there is legitimate ground to impeach it, the Court may order, under financial penalty if need be, the defendant to disclose documents in order to prove the origin and distribution networks of the allegedly infringing products.
The action is commenced with a writ of summons (WoS) which outlines the subject-matter of the case, identifies the claimant and its trade mark rights, the defendant, describes the alleged infringing acts and outlines precisely the claims and remedies. A list of the pieces of evidence the action relies upon is attached to the WoS. These requirements are imposed on penalty of nullity of the WoS.
In response, the defendant can:
Representative or collective actions, such as class actions, are not allowed under French trade mark law.
Several restrictions may prevent a trade mark owner from enforcing its rights against potential infringers.
Amongst them, the statute of limitations provides that the action is time-barred upon five years as from the day the right holder knew or should have known the last infringing act.
Likewise, if the owner of a prior trade mark has knowingly acquiesced in the use of a posterior trade mark for five years, the infringement action is not admissible.
In addition, the rules of exhaustion of rights provide that a trade mark owner shall not prevent anyone from using the trade mark if the goods bearing the sign have been commercialised within the EEA by the owner or with the consent thereof.
More generally, in accordance with antitrust law, trade mark enforcement shall not constitute a means of arbitrary discrimination or a disguised restriction on trade between the Member States.
French Courts may also restrict trade mark enforcement in the event of a potential contradiction with other fundamental rights, such as freedom of speech, public health.
Infringement actions can be commenced by:
Licensees and trade mark owners can always join a pending action to seek the compensation of their own damage.
Any person entitled to use a guarantee or collective mark may bring an infringement action only with the consent of their owner, unless otherwise provided in the regulations for use, or join an infringement action brought by the owner. The guarantee or collective mark owner may seek, on behalf of the persons entitled to use the trade mark, compensation for the damage suffered by them as a result of unauthorised use of the trade mark.
Facts prior to the application publication do not amount to infringement, but acts subsequent to the notification to the alleged infringer of a copy of the application can be prosecuted. The competent court shall stay the proceedings until the registration publication.
Infringing acts include, notably:
Preparatory acts can also amount to infringement.
It is necessary to prove that the sign has been used as a trade mark in the course of trade. French case law applies CJEU case law.
First of all, procedural defences such as prescription and preclusion due to acquiescence can be raised. Also, the defendant can ask the owner of a prior trade mark registered for more than five years, to demonstrate genuine use for a continuous period of five years of the trade mark for the goods/services that are opposed in the action.
Second, the following defences directed to the registered trade mark are common:
Finally, as to defences based on limitation of the effect of the trade mark, the owner is not entitled to prevent a third party from using the trade mark in the course of trade, in accordance with honest practices in commercial matters:
In any case, good faith of the infringer is not relevant before civil courts, contrary to criminal courts.
Surveys and expert’s affidavits can be submitted before the courts, but they have to be objective and established by independent entities whose integrity is not questionable.
As with any other evidence, judges will evaluate probationary value.
Trade mark infringement can amount to a criminal offence. Proceedings can be initiated either by a complaint filed before the Public Prosecutor, or by a writ of summons directly served to the infringer. Trade mark infringement can be sanctioned by up to four years imprisonment and a fine of up to EUR400,000 (multiplied by five for legal entities). Trade mark infringement with aggravating factor can be sanctioned by up to seven years imprisonment and a fine of up to EUR750,000 (multiplied by five for legal entities).
There is an efficient system for customs seizure of counterfeits in France (which do not apply to parallel imports).
On the basis of the French Intellectual Property Code or the EU regulation, trade mark owners may apply for action by the customs authorities against goods suspected of infringing their trade marks.
Customs authorities may detain goods suspected of infringing trade marks for ten days (or three days for perishable goods) so that the trade mark owner may authenticate the goods.
Information regarding the holder/origin/destination of the suspicious goods and their quantities can be disclosed to the trade mark owner.
If the infringing nature of the goods is confirmed, the trade mark owner may request their destruction (without further court action if the holder does not oppose) and/or initiate a court action.
Revocation/cancellation proceedings can be decided either by the INPI or by civil courts (see 5.2 Factors in Determining Infringement).
A trade mark can be cancelled based on both absolute (eg, lack of distinctiveness; deceptiveness; contradiction to public order) and relative grounds (eg, harm to a prior right, such as a trade mark, company name, domain name, copyright, design right).
A trade mark can be revoked in the following cases:
In an infringement action or cancellation action based on a prior registered trade mark, it is worth noting that the defendant may request proof of a genuine use of the prior trade mark. Failing such proof, the action shall be declared inadmissible.
Both the INPI and civil courts have jurisdiction over revocation/cancellation actions according to the nature of the claim.
If the action relies on absolute grounds of nullity or prior distinctive signs, the INPI has exclusive jurisdiction.
If the action relying on other grounds (such as copyright, design, patronyms) is filed in the course of ongoing interim or probationary proceedings or an action on the merits before a judicial court (infringement, unfair competition, contractual liability), the competent civil court shall have exclusive jurisdiction over the entire case.
Cancellation actions are imprescriptible since 23 May 2019.
However, the owner of a well-known trade mark pursuant to Article 6 bis of the Paris Convention of 20 March 1883 shall not be entitled to request the cancellation of a trade mark upon five years of the registration thereof, unless the latter has been filed and registered in bad faith.
Likewise, any prior right holder shall not be entitled to file a cancellation claim if this right holder had been aware, for five consecutive years, of the use of a posterior registered trade mark, unless this latter has been filed and registered in bad faith.
Revocation/cancellation actions can be initiated before the INPI by any legal or natural person, whereas they can be initiated before a civil court by any person having legal standing.
If based on a relative ground, cancellation actions can be initiated by the prior right holder only.
Partial revocation/cancellation may be ordered, if the claim itself is limited to part of the goods or services or if the reasons for revocation/cancellation affect only part of the goods or services.
Once filed, revocation/cancellation actions cannot be extended to other grounds or goods or services than those provided in the initial claim.
However, if expressly requested and at any time during the proceedings:
Any action involving revocation/cancellation and infringement may be heard together by a civil court only, while the INPI has an exclusive competence for revocation/cancellation actions disconnected with any infringement claim.
Revocation/cancellation actions before the INPI shall be dealt with in compliance with a regulatory timeframe, unlike the procedure before a civil court. The INPI’s decision should be handed down within three months as from the end of the adversarial procedure.
The general procedural provisions apply to trade mark proceedings, but there are some peculiarities in relation to the interim injunction/regime, the saisie-contrefaçon, the right of information, as well as the number of competent courts.
Trade mark cases are determined by a panel of three legal judges. The parties have no influence on who the decision maker is.
The parties may, at any time in the course of proceedings, negotiate on their own or under a judge’s order appointing a mediation.
It is worth noting that, on appeal, the court systematically invites the parties to settle and more and more often proposes to the parties a mediation, which they can refuse.
Other court proceedings can have an indirect action on current proceedings, as a judge may order a stay of the proceedings if a cancellation/revocation action is pending before the INPI, the EUIPO or a different court, and as the outcome may have an influence on the proceedings.
All the remedies provided in the enforcement directive are available:
At their own discretion and upon request, judges might award to the winning party at least partial reimbursement of its attorney’s fees.
If the claimant has misused the proceedings, the claimant may be sentenced to pay a fine (up to EUR10,000) without prejudice to pay damages to the defendant.
There are no alternative remedies available for different types of trade marks.
Alongside standard appellate procedure against a judgment of first instance, specific rules apply to appeals lodged against decisions of the INPI (opposition, revocation or cancellation). They all have to be brought before one of the ten specialised Courts of Appeal.
In all cases, the representation of the party by a bar-registered lawyer is mandatory before the Court of Appeal.
Cancellation/revocation decisions made by the INPI are reviewed by the Court on a factual and legal standpoint, but the appeal is limited to the arguments and exhibits submitted in first instance.
In other cases, appeals of decisions of the judicial courts are, from a legal and factual standpoint, de novo, ie, new arguments and evidence can be submitted.
Average appeal proceedings may last between 12 and 18 months.
Dilution shall not constitute a ground of opposition or of trade-mark infringement per se.
However, dilution is taken into account in the assessment of the likelihood of confusion and, more importantly, in the assessment of the infringement to a well-known trade mark.
A trade mark which is famous outside France but not in use or registered in France is not entitled to any protection in France, except against a fraudulent registration – ie, when a party purposely and fraudulently registers a trade mark in order to prevent its filing by the legitimate party.
French Law recognises two types of protected geographical indications:
Guarantee trade mark is the new designation of certification trade marks. They are subject to special rules in the Intellectual Property Code.
A trade mark shall not entitle its owner to prohibit third parties from using in the course of trade their patronym. However, a third party cannot apply for a trade mark reproducing its surname if it designates the same goods and services than a well-known prior trade mark or if his or her surname is similar to a public or famous personality, as this would cause a risk of confusion on the part of the public.
Typical costs for a warning letter are EUR500 to EUR2,000. Other costs including bailiff fees, are to be considered in relation to collecting evidence of infringement such as for a saisie-contrefaçon (EUR5,000 to EUR7,000), an official purchase report or official internet report (EUR300 to EUR1,500). In addition, costs for the analysis and determination of the judicial strategy can amount to EUR10,000 and beyond. In some cases, surveys need be conducted to establish, for example, the reputation of the trade mark, which increases the costs.
Infringement action costs are in first instance between EUR40,000 and EUR80,000, but can be far higher in complex trade mark cases.
The Court may order the (partial or entire) reimbursement of the legal costs of the winning party by the losing party. Providing financial statements helps to obtain higher award.
The INPI may also order the reimbursement of the procedural costs of the winning party, the amount will be limited by ministerial decree.
Negotiations between the parties can occur at any time, before and during the proceedings. ADR is encouraged by the civil procedural rules and courts. The parties can negotiate directly. There is no obligation to be represented by a lawyer.
A sign can also be protected by copyright and/or designs. Patent design does not exist in France.