Once the trademark has been registered, the INPI conducts a formal examination of the application for registration as well as an examination of the absolute grounds for refusal (distinctive character, not adversely affected by public policy or public decency, absence of coat of arms, flags ...).
The French Office may ask to specify the designated products or to include a class which contains some of the designated products, without extending the application scope. The French Office may also refuse a sign for its lack of distinctivity.
In case of irregularities, the applicant has a time allowed by the French Office (generally one month) in order to regularize his application or to contest the observation.
The registration request is then published, approximately three to six weeks from the filing date.
This publication of the registration request opens a two-month opposition period during which third parties may object to the registration request.
In the absence of opposition, or after opposition if the opposition is rejected, the mark is registered.
The trademark registration is notified to the applicant and published in the BOPI. The trademark is registered for 10 years, from the filing date, and is renewable by 10-year periods.
Without any further requirements, protection of a mark in France gives also rights in the "Overseas Departments" (Guadeloupe, Martinique, Reunion and French Guyana), in the "Overseas Territories" (Wallis and Futuna, the French Austral Islands and the French Antartic territories), in the "Territorial Collectivities" (St Pierre and Miquelon, Mayotte) and in New Caledonia and dependencies.
Publication of the application as filed : about 6 weeks after the filing.
Registration if no Office Action or with one Office Action (no opposition) : about 6 months.
Registration with a won opposition : about 1 year.
The proprietor of a registered mark must remain vigilant to preserve the right to his mark.
A French trademark can incur the lapse for non-use if the trademark is not used as a trademark, that is to say to identify products and services as coming from a specific company, for all or part of products and services for which it has been registered, for a period of more than five years.
It is therefore important to exploit the mark for all the products and services for which it has been registered, and to keep proof of this use to prevent an action for revocation for non-use.
Any change to the trademark holder (transfer, license grant, change of name, legal form, address) must imperatively be registered in the national trademark register to be enforceable against third parties.
It is recommended that surveillance of trademark registration applications having effect in France be implemented to prevent an identical or similar mark, designating identical or similar products and services, from being registered.
In the event of an application for registration of the same or similar mark, designating identical or similar products and services, it may thus be considered to file an opposition.
The exploitation of the trademark must be framed by contracts (transfer, concession of license, coexistence) taking into account the specificities of the trademark, adapted to each situation.
The French trademark is protected for a period of 10 years, renewable indefinitely. It is therefore necessary not to miss the deadline for renewal of the trademark, so that it does not fall into the public domain.
Trademarks registered before 12/11/2019: the trademark is protected until the last day of the anniversary month and its renewal can be initiated within the last six months of the 10-year protection period.
Trademarks registered from 11/12/2019: the trademark is protected from date to date and its renewal can be initiated for a period of one year preceding the date of expiration of registration.
According to Article L 714.7 of the French trademark law “any transfer or modification of rights under a registered mark shall only have effect against others if entered in the National Register of Marks”.
It is therefore important to record an assignment, license, change of name or address as soon as possible.
No document is required.
We need to know the previous names, legal form and address as last recorded in the French trademark register.
To record an agreement of assignment, we have to file an application for the registration of this entry, together with :
Concerning the agreement, we can prepare a formal draft thereof which will be in English and French.
We will receive the registration receipt four or five months after the filing of the request (or about one month if swift processing is requested).