Is there a time frame for the trademark registration approval?
The average time frame for the registration approval is 4 months, if no objections or oppositions arise.
If I register my trademark in France, do I have protection in other territories?
The territorial limits of a registered mark in France are: Metropolitan France, Martinique, Corsica, Guadeloupe, Saint-Barthelemy, French part of Saint-Martin, Reunion, French Guyana, French Polynesia, New Caledonia, French Antarctic Territories, Wallis and Futuna, and Mayotte and Saint-Pierre et Miquelon. The protection of mark does not extend to French Polynesia.
Do I need to sign a Power of Attorney?
No power of attorney is required.
Are there any benefits from a pre-filing use of the trademark?
There is no benefit from pre-filing use of the trademark. However, famous trademarks are protected in this jurisdiction even if these are not registered. To prove that your mark is famous will be extremely difficult.
Will there be problems in case I don’t use my trademark after registration?
Registered marks that are not being used by owners are vulnerable to cancellation when interested parties take their appeal in courts.
What are the types of trademark that can be registered in France?
Any sign that can be graphically reproduced and can set apart the good/service from its counterparts can be registered:
- 3-dimensional shapes
- Trade dress
What are the phases of application after a trademark has been filed in France?
The order of the trademark application procedure in France is as follows:
Examination – In this phase, the application will be examined if the applicant complied with all of the requirements. Compliance with regards to formality, descriptiveness, classification, distinctiveness and deceptiveness will be checked.
Publication – The particulars of the application will be made available to the public especially to third-parties that are interested to oppose. Publication of details will be on print and online.
Registration – After the prosecution and oppositions have been settled, registration will finally be issued.
What type of trademark is not registrable?
The following signs are prohibited from being registered:
- Marks that go against public order and principles of moral
- Common terms that have broad meaning
- Marks that do not display distinct characteristics
- Marks that function primarily as names of a geographic location
- Marks that use protected flags/names/symbols of international organization, states and nations
Does France use the "Nice Classification" system?
Yes. Nice Classification system is being used in France.
Does the Community Trademark apply for France?
Yes. France is a member of the European Union Trade Mark. Hence, Community Trademark registration system is effective in this jurisdiction.
Is there any possibility to claim priority in France?
Yes. It is possible to claim the filing date in your home country as the filing date in France provided that you meet the following pre-requisites:
- Your home country is a member of the Paris Convention or World Trade Organization
- The filing date in your home country is within 6 months from your application date in France
What do I need to do to satisfy the use requirement?
You have to use your trademark within 5 years of last use, meaning there should be no 5-year gap between each use. You must use it for commercial or selling purposes and the transaction must occur in the jurisdiction of France.
Once my trademark has been registered, for how many years will be valid?
A trademark’s validity of term is effective for 10 years which is computed from the date the application was filed.
What will be the renewal date of my trademark?
Renewal date is computed 10 years from the date of filing the application.
Is it legal to use my trademark even if it is not yet registered?
Yes. You may legally use your trademark even if it’s not registered yet.
Does having a registered trademark in France give me any right?
Yes. This jurisdiction mandates owners to register their trademarks in order to establish rights. The first-to-file rule applies in France.
What is the web address of the trademark national office?
Is there any need to use my trademark before I apply for registration?
This jurisdiction does not mandate applicants to actually use the mark or have intention to use the mark before they apply for registration.
Can a Trademark Application be opposed?
Yes. These are the grounds for opposition:
- A similar mark was applied for in an earlier date
- The mark is strikingly similar-looking to a famous mark
- The mark has graphical indication
- The mark is hostile to a territory’s reputation and name
Who can contest my trademark registration?
The following parties can oppose a trademark from being registered:
- Owners of a similar mark that was registered at an earlier date
- A licensee of the registered mark
- Owners of products that obtain advantages from its indication of origin
Is it possible to cancel a registration?
Yes. Third-parties can make an appeal to cancel a registered mark. Grounds for cancellation include:
- Marks that are descriptive, generic, functional, misleading or non-distinctive
- Marks that consist of geographical indication and protected flags, badge, emblem or armorial bearings
- Marks that are applied for or registered in bad faith
- Marks that are prohibited in this jurisdiction including marks that contradict principles of morality and marks that go against public order
- Marks that are proven to infringe other rights
- Violation of user requirements under Section VIII.A
Are there any rights established by having a registered trademark?
Yes. Owners of a registered mark in France establish the following rights:
- Exclusive right to use and profit from the mark
- Right to oppose any conflicting application and appeal for its cancellation
- Right to request for revocation of any conflicting registration
- Right to file an infringement case against parties that use the mark without permission or use a confusingly similar mark
- Right to receive damages for infringement
- Right to issue license to other businesses so they can use the mark
- Right to appeal for the confiscation of fake goods from customs authorities
How long is the opposition period?
The opposition period starts on the publication date of the application and ends two months after that date.
Is France a member of the Madrid System?
Yes. France is a signatory of the Madrid Protocol and the Madrid Agreement.
Do I need to present periodic statement of use?
No, these are not required.
When should I renew my trademark?
Succeeding renewals should be done every 10 years from the date the registration was renewed.
What will be the renewal date of my trademark?
Renewal date is computed 10 years from the date of filing the application.
Is there any documentation that should be presented when renewing a trademark?
No. Documentation is not needed for renewals.
If my trademark expires, do I have a grace period?
When a trademark expires, the owner is given a grace period of 6 months to renew the mark with additional penalty fees.
What is a trademark?
A trademark identifies a company’s products and services and distinguishes them from those of its competitors in the market. The name (the verbal element) is not the only component of a trademark—figurative elements such as logos, design, images, colors, and sounds also create an identity that can be protected by trademark registration.
With the registration, the owner (person or company) becomes the owner of the trademark. The registration is given for a particular country/territory, for certain products or services, and for a specific term. While the registration is in force, only the owner may use the trademark in the market where the trademark is registered.
Some symbols to consider:
® Means the trademark is registered.
TM Some countries use this trademark symbol to show that the trademark has been filed at the trademark office and is still undergoing the registration process.
SM Some countries use this service mark symbol to show that the service mark has been filed at the trademark office and is still undergoing the registration process.
What is the difference between a trademark, patent and copyright ?
You can lay claim to your work in many ways. Trademarks, patents, and copyrights offer protection to intellectual property owners. A trademark helps people find your goods and services. When recognized as a registered mark, it protects your right to exclusively use the image, logo, phrases, or words to distinguish your goods or services from others in the market.
A patent safeguards ideas and inventions. It gives a creator or inventor exclusive rights that prevent other people from making, using, or profiting in any way from an invention or creative innovation without the consent of the inventor.
You cannot patent an idea alone (otherwise we’d all be doing it). You must materialize your concept into a tangible invention, innovative product, device, or process that offers new solutions to an existing problem.
Copyright protects all types of original published, performed, and printed creative works of art, literature, and music. It prevents people from using, reproducing, or distributing copyrighted works without the permission of the artist, author, composer, etc. Types of work covered by copyright protection include:
- a) artwork (2 or 3 dimensional),
- b) photographs, graphic drawings, and designs as well as other forms of creativity;
- c) songs, music, and sound recordings of all kinds;
- d) books, manuscripts, publications, and another written work; and
- e) plays, movies, shows, and other performance arts.
Trademarks, patents, and copyrights are all examples of ways you can protect your intellectual property. Your rights to control and benefit from your efforts are increasingly important in our global economy. Registering a formal claim to your property is a critical step in protecting what you own.
What is the difference between TM, SM, ® and other symbols?
The symbol of a circled letter R after a trademark name or graphic image means that the preceding trademark has been registered. Various typographic symbols indicate copyrights and patents. The presence or absence of a symbol does not change the validity of the registration, but the best practice is to use circle‑R or circle‑C for copyrights every time you mention your intellectual property in print. These symbols give legal grounds for claiming damages in trademark litigation. The following is a list of some typical marks you can use on a web page, in written content, or even in a marketing letter.
- TM: The TM or trademark symbol indicates an unregistered trademark for one of 34 different classes of products. Owners use this symbol to claim the preceding name or logo as the Trademark of their product.
- SM: The SM or service mark symbol is similar to the TM symbol except it indicates a claim to a mark for a service (one of 11 classes of service) rather than a tangible product.
- ®: Use the ® symbol once you’ve registered your trademark or service mark. It shows that the country authority has approved the registration.
- ©: Use the © symbol to indicate copyrighted material. The copyright notice should appear on the material as Copyright © followed by the date the work was created, the copyright owner’s name, a period, and finally “All Rights Reserved.” Like this: Copyright © 2021, John Smith. All Rights Reserved. Use it whether the copyright has been registered or not.
- Patent Pending: The phrase Patent Pending shows that you filed a patent application but cannot guarantee the application's approval.
What are trademark classes?
Trademark Offices around the world use classes to divide commercial products and services into defined categories. When you apply for your trademark to protect your brand, you must define the class or classes that you believe best describe your business activity.
Countries around the world have standardized 45 classes (34 for products and 11 for services) for international use under the Nice International Classification.
These classes group all known products and services. If applicable, you can register the same trademark in more than one class; for example, you may register the trademark KING for computers in class 23 and register the same trademark in class 24 for cosmetics.
Trademark protection only extends to commercial use within your specified classes. It is, therefore, possible for two entities conducting business in different classes to use identical or similar trademarks and for each entity to enjoy full trademark protection in their respective classes. If you feel that protection should extend to include more than one class, you can choose multiple classes under which to conduct business.
You can search for your trademark class with this Trademark Class Search tool.
Why do I need to perform a trademark search?
Once you have a product or service and think you have a name for it, how do you know you can use it as your own? What happens if you unintentionally use a registered trademark name?
Too many people use a name without knowing whether or not they have the legal right to do so. They organize massive marketing campaigns with names they later find they’re not allowed to use. Performing a comprehensive search before deciding which trademark to register is a wise thing to do, especially when you consider future risks of litigation.
It is a good idea to carry out some research before starting to do business with a trademark. It may not be in your best interest to use a mark if another company is already actively conducting business in the same class. The other company may object to you using the trademark and legally prohibit you from doing so.
Do I need an Attorney to perform a Trademark Search?
No, you don’t, but if you have little or no experience dealing with trademarks, we suggest you seek professional help. Our company offers a Comprehensive Trademark Study service. The Study gives you details of the classes in which you might want to register your trademark; it also lists identical and similar trademarks, and finally, you get an Attorney's recommendation about registration possibilities and use of your trademark.
Where can I perform a trademark search?
If you know a little about trademark registration, you can search using any online trademark search tool. If not, we recommend that you hire a trademark attorney or trademark service like Nominus.com to handle your trademark registration requirements, especially the trademark search because the process is complex and relatively time consuming.
Please note that if you don’t manage to complete the application process correctly, the registration can drag on for several months and end up costing far more than you intended to pay. The trademark search is a critical part of the process.
A broad trademark search is essential in today's marketplace, given the increasing number of unregistered and common law trademarks. Globalization also raises the question of entering international markets and registering trademarks in foreign countries to protect both your brand and your property rights.
Please note that even a completed comprehensive trademark search does not necessarily guarantee your trademark will be accepted and registered. A Comprehensive Trademark Study includes an extended review process and, more significantly, a formal evaluation of the likelihood that your application will be successful.