Regardless of the activity, registering a trademark is essential as it identifies your business as well as the products and services and the identity of your company.
Here are some tips for effective protection of your brand in France.
1. Why register a trademark in France?
France is the second most populous country in Europe after Germany and represents a significant market for any economic actor. Trademark registration in France is carried out at the National Institute of Intellectual Property (INPI).
Fast and easy, all types of trademarks can be filed online, without mandatory representation and at low cost.
The cost of filing a trademark in France is lower than in Germany, regardless of the number of classes:
It is possible to extend your deposit to French Polynesia for an additional fee of 60 euros.
2. What to do before filing your trademark?
It is necessary to consider the availability of the sign you wish to register. This step is very important as it avoids opposition procedures which can be long and costly, or even lead to the total rejection of your trademark application.
Depending on your filing strategy, it is important to determine precisely the goods and services for which you intend to use your trademark. These goods and services are organised in a classification, known as the Nice Classification. There are 45 classes classified as follows:
· Classes 1 to 34 cover goods; and
· Classes 35 to 45 refer to services.
The filing date of your application is important because once the trademark is registered, it will represent the starting point of the validity of your trademark, it will allow you to benefit from a priority right in the context of the extension of its protection with another office, and finally, it will serve as a reference for its renewal, ten years later.
Any application for a trademark identical or similar to yours, and filed after yours, may therefore be rejected (note: the rejection will necessarily be conducted as part of an action from your part, as it is not the function of the offices to check the availability of a trademark during its examination).
3. Process of registering your trademark in France
Once you have registered your trademark online, you will receive from INPI:
· an acknowledgement of receipt bearing the date, and
· the national number of your deposit.
You will be able to follow its progress on the INPI's eprocedure website at https://procedures.inpi.fr/?/
The application is then published in the Bulletin de la propriété industrielle (BOPI), usually within 6 weeks. This publication does not prejudge the decision of the Office as to the registration of the trademark. Why not? Because during this period, the Office examines your trademark application and issues possible objections if it does not meet the conditions for validity:
· distinctiveness: the mark must identify the economic operator, or goods and services among those of competitors, and not describe the goods and services;
· lawfulness: in accordance with public order and morality.
The Office will also send you its observations with a view to regularising the application.
From this publication onwards, third parties can oppose your trade mark application.
What is an opposition?
If a third party believes that your new trademark infringes their earlier rights due to similarity of signs and goods and services, then that third party can file an opposition to your trademark application to have it rejected in whole or in part.
Hence the importance of a prior art search carried out by professionals in order to exclude any risk of opposition!
At the end of this two-month opposition period (as opposed to three months at the German office), your trademark is finally registered, if no objections are filed by the INPI and no opposition has been filed within the deadline.
The registration of your trademark is deemed to be effective from the date of filing, which will be formalised by a second publication in the BOPI, after a minimum period of five months, once the examination procedure has been completed. You will receive a registration certificate.
All changes to your trademark (partial withdrawal, limitation, etc.) will also be published to inform third parties of the status of your trademark.
Do you want to register a trademark in France? MARS-IP advises you on the choice of your trademark, registers your trademarks and assists you in managing your trademarks.