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What can be filed as French trademark?

The mark is a sign which serves to distinguish the goods or services of a company or of a person. The part played by the mark is to draw the attention of the consummer and to indicate the origin of the designated goods, while respecting the rights of the third parties.

The different sorts of marks (Art. L. 711-1)

A mark is a sign capable of graphic representation. It may be constituted, for example, by denominations (real, created or distorted words, surnames, geographical names, letters, abbreviations...), by sounds (graphically represented by a staff or by a spectrum for example), by figurative signs (devices, holograms, logos...), by shapes (non functional part of a packaging...), by shades of color...

All signs cannot be filed (Art. L. 711-2, Art. L. 711-3)

A mark shall not describe the goods or services which it designates. It is impossible to appropriate signs which, for example :

- exclusively designate the good or service, in everyday or technical language,

- may serve to designate a feature of the product or service (the quality, the geographical origin, the purpose...).

For example, the French Office has refused to register the sign "Le tourisme d'affaires" (i.e. the business tourism) to designate a service of business tourism or "Les soupes de la forme" (i.e. the soups of the form) to designate soups.

It has to be noticed that the validity of a mark shall be contested ulteriorly by a third person, although it was registered, for example at a prosecution for infringement.

The mark shall not deceive the consummer neither, for example by suggesting a quality which the product does not have.

The earlier rights (Art. L. 711-4)

At this step of the mark creation, one can retain several signs that could be the mark. The choice is then taken according to different rights of third persons, because filing a mark shall not infringe earlier rights (marks, company names, protected appellation of origin, author's rights, signs protected according to article 6ter of Paris Convention...). One has to check if the retained signs are available.

In France, the mere filing of a mark is an act of infringement with regard to an earlier mark. The damages which can be allowed to the earlier mark owner for such a filing are regularly at least 10 000 EUR. It is therefore essential to conduct anteriorities searches, even if they will never be exhaustive (all earlier rights are not listed).

If a filing of the same sign is already intended abroad, these searches have to be conducted among the earlier rights of the extension country (countries).

It is not recommended to create a mark by drawing one's "inspiration" from another sign (name of a famous restaurant, nickname of an actor, title of a song...). Indeed, even if you want to designate different goods, such as clothes, the filing and the use of your mark could be judged as parasitism or as an interference with a copyright...