🇬🇧 - THE REGISTRATION PROCEDURE FOR A TRADEMARK IN FRANCE
Mis à jour : 8 juil. 2020
The registration process in France is very much like that in Germany. There are however some exceptions, namely a trademark without a so-called "leading class" (1), the opportunity to extend the trademark to other areas (2), an objection period before registration (3), an official review of the sign parallel to the opposition period (4) and the beginning of the grace period (5).
1. Registering a trademark without a "leading class"
The trademark must be registered in French. Just as in Germany and before the EUIPO, the terms of the goods and services directory should be clearly defined to avoid, among other things, an official objection. France is also a participant in the to uniform classification data base, better known as the TM Class. It is also interesting that the French system includes a leading class that would describe the main focus of the registration.
2. The opportunity to extend the mark to other areas
Another feature of the French trade mark registration procedures is the opportunity to extend the mark to New Caledonia and French Polynesia. Since 1 February 2014, however, the extension to French Polynesia is no longer automatic or free of charge. Similar procedures do not exist in Germany but do in the UK, among other places, with the opportunity to extend the trademark to Jersey, the Bahamas or the Cayman Islands.
After the filing of the application and payment of fees, an acknowledgement of receipt is sent by the INPI in the form of a copy of the application form containing the application number and filing date. This date is still important for the priority period of six months in which to extend the trademark abroad. This information is to found on the first page of the application form returned by the INPI.
3. An opposition period before registration
The registration is published in the so-called BOPI within six months. This marks the beginning of the opposition period. This appears to be the biggest difference between the German and French trademark registration procedures, namely that the opposition period is calculated differently. Third parties have two months after the publication of the application in which to appeal against a French trademark. Not so in Germany, where the opposition period starts from the date of registration and runs for three months.
4. An official review of the mark is carried out in parallel to the opposition period
At the same time, the office checks whether the application is formally correct. In contrast to the DPMA, the French Office often raises objections against Goods and Services, especially if the terms are not clearly recognisable within the uniform classification database. Objections due to absolute grounds of refusal, especially due to the distinctive character of the mark seem, however, not to be raised in practice as often as in Germany. Some terms, which the DPMA considers inadmissible are accepted in France or by the EUIPO. This seems to be especially the case for word marks containing the everyday words. A written objection will be sent to the applicant, if it turns out during the examination that are grounds for refusal. If the mark is totally or partly rejected, the applicant has one month in which to submit a statement.
It is worth noting that the Office may even reject the mark after expiry of the opposition period. For this reason, the end of this term does not automatically mean that the trademark is registered in France.
Just as in Germany, the French Office does not check whether previous similar marks have been registered. And no search reports such as those issued by the EUIPO will be sent.
5. The beginning of the grace period for use of the trademark
If the mark complies with the statutory requirements, registration is published. This also means that in France, the grace period is reckoned from the date of registration and not from the date of actual registration, that is three months after the publication of the registration, as is the case in Germany or Switzerland. Thus the French trademark registration procedure is similar to that of the EUIPO.
All that now remains is for the holder of the French trademark to collect evidence of use of the trademarks in France, in order to maintain the rights to the trademark after the grace period of five years in the event of further proceedings.