The effects of registration of a French mark begin on the filing date of the application for a term of 10 years that may be renewed any number of times.
The renewal of the registration must contain neither modification of the sign nor extension of the list of goods and/or services, a limitation being nevertheless possible.
However, the statute law seems to accept slight modifications which do not alter the distinctive nature of the mark.
Mark use
According to Article L. 714-5 of the French Intellectual Property Law (CPI), the owner who has not put his mark to genuine use in connection with the goods and/or services referred to in the registration during an uninterrupted period of 5 years, without good reason, shall be liable to revocation of his rights.
The use concerns the mark as registered, but slight modifications which do not alter the distinctive nature of the sign are possible.
The use relates to the goods and/or services referred to in the registration. A partial revocation is then possible if the owner uses his mark only for a part of the goods and/or services referred to in the registration. The use for similar products (as clothing and shoes) is insufficient.
The sign has to be used as a mark. The use as a company name for example is not sufficient.
It is of importance to be able to provide, at any time beginning 5 years after the filing of the French mark, evidences of use (as catalogues or advertising from different years...).
Revocation of a mark that has become common
When a product is new, it is often named by its mark. For example one says a "thermos" instead of an "isolated bottle". The owner has to prevent his mark from becoming the common name of the product or service. If he takes no action, he is liable to revocation of his rights according to article L. 714-6 of the French Law.
Foreclosure by tolerance
Article L. 716-5 of the CPI provides that the owner of a mark cannot proceed for infringement against a later registered mark if he has tolerated its use for 5 years.
A mark which first seems to have a small scope of activity can always grow up lately. A late infringement proceeding will then not be admissible.
Watching over the mark applications
It is highly recommended to watch up the filing publications of marks having effect in France : French marks, Community marks and international marks designating France. We can follow these publications and warn you when an opposition may be done against the registration of an identical or similar mark application.
Opposability to others
Any transfer or modification of the rights shall be recorded as soon as possible in the National Register of Marks in order to always be opposable to third ones.
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