Background
Although ultimately a victor in World Wars I and 11, France suffered
extensive losses in its empire, wealth, manpower, and rank as a
dominant nation-state. Nevertheless, France today is one of the most
modern countries in the world and is a leader among European nations.
Since 1958, it has constructed a presidential democracy resistant
to the instabilities experienced in earlier parliamentary democracies.
In recent years, its reconciliation and cooperation with Germany
have proved central to the economic integration of Europe, including
the introduction of a common exchange currency, the euro, in January
1999. At present, France is at the forefront of efforts to develop the
EU's military capabilities to supplement progress toward an EU
foreign policy.
Who May Apply?
The first applicant is entitled to the registration and exclusive use
of a mark. Foreign applicants may obtain protection under the French
law. However, except in case of international conventions, the benefits
of the law are conditioned on proof that a regular application has
been filed for the mark or that registration has been granted in the
country of the applicant's domicile or establishment. In addition, the
home country must grant reciprocal protection to French applicants.
What Can Be Registered?
Trademarks and service marks that are capable of graphic representation
and serve to distinguish the goods or services of any natural
or legal person are registrable. The following are
specifically enumerated in the law:
(1) denominations in all forms, including words, combinations of
words, surnames, geographical names, pseudonyms, letters, numerals,
and abbreviations;
(2) audible signs, including sounds and musical phrases; and
(3) figurative signs, including devices, labels, seals, fabric borders
and selvedges, reliefs, holograms, logos, synthesized images;
shapes, including those of the product or its packaging, or those
that identify a service; arrangements, combinations, or shades
of color.
What Cannot Be Registered?
The following are not distinctive and are not inherently eligible for
registration:
(1) signs or names which in common or technical language constitute
the necessary, generic, or usual designation of the goods or services;
(2) signs or names that serve to designate a feature of the product
or service, particularly the type, quality, quantity, purpose,
value, geographical origin, time of production of the goods or
furnishing of the service; and
(3) signs consisting exclusively of the shape imposed by the
nature or function of the product or which give the products its
substantial value.
According to Article L 711-3, the following may not be adopted as a
mark or an element of mark:
(1) signs excluded by Article 6ter of the Paris Convention for the
Protection of Industrial Property of March 20, 1883, as revised;
(2) signs contrary to public policy or morality or whose use is
prohibited by law; and
(3) signs liable to mislead the public, particularly as regards the
nature, quality, or geographic origin of the goods or services.
According to Article L 711-4 of the CPI, signs may also not be
adopted as marks where they infringe earlier rights, particularly:
(1) an earlier mark that has been registered or that is well-known
within the meaning of Article 6bis of the Paris Convention for the
Protection of Industrial Property;
(2) the name or style of a company, where there is a risk that the
public may be confused;
(3) a trade name or sign known throughout the national territory
of France, where there exists a risk of public confusion;
(4) a protected appellation of origin;
(5) author's rights;
(6) rights deriving from a protected industrial design;
(7) the personality rights of another person, particularly his or
her name, surname, pseudonym, or likeness; and
(8) the name, image, or repute of a local departmental authority.
Well-known marks:
There are no specific provisions relating to the protection of wellknown
marks. However, a person who uses a mark for goods and services
that are not similar to those designated in the registration is
civilly liable if such use is likely to harm the owner of the mark or constitutes unjustified exploitation of the mark.
Rights
A third party may use a similar mark on different goods and services,
provided that there is no likelihood of confusion in the average
consumer's mind. On the other hand, it is not possible to use a similar
mark on the same products, except with the consent of the prior mark
owner.
In general, a previous use of a mark does not confer any right to be
opposed to the later use andlor registration of a similar mark by a
third party. However, if the marks are identical or very close and filed
in bad faith by a third party, the first user may claim ownership
rights on this mark.
Filing Requirements
Documents required for registration:
- Five exemplars or prints of the filing form;
- Five prints of the mark.
An electrotype is no longer required.
Representation:
Only applicants not having their residence or their seat in a member
state of the European Community or in a state party to the Agreement
on the European Economic Area must appoint a representative
who has his residence, his head office, or his premises in a member
state of the European Community or in a state that is a party to the
Agreement on the European Economic Area. The representative must
be an industrial property attorney. Residency or a physical presence
in the country is not necessary to file applications for registration.
Where a representative must be obtained, a simply signed power of
attorney is sufficient.
Evaluation & Review
An application for registration will be rejected if it does not meet
the application requirements, if the sign is of the kind that may not
constitute a mark, or if opposition to the application is upheld. When
grounds for rejection concern only a part of the application, partial
rejection may be ordered.
Official actions based on absolute grounds of refusal, including
descriptiveness, deceptiveness, nondistinctiveness, etc., must be presented
or noticed within four months from the filing date. A twomonth
period is given to the applicant to file a reply or to comply with
the notification.
Duration
Registrations last 10 years and may be renewed an unlimited
number of times. Partial renewal for a part of goods and services is allowed.
Renewal is prohibited if there has been an alteration of the mark or
an extension of the list of goods and services. When such modifications
or extensions have been made, a new application is required.
Such a new filing may be accompanied by an anticipated declaration
of renewal for the previous mark. The new period of protection begins
from the declaration of renewal. Subsequent renewals of the renewed
mark and of the new filing are made by means of a simple declaration.
When no such modifications have been made, renewals are not
subject to examination for registrability or opposition procedures.
Renewal is generally published within four months from the
application. Renewal applications must be filed during a six-month
period, expiring the last day of the month of the expiration date.
Pursuant to Decree No. 2004-199, renewals can be filed during the
grace period of six months, provided that late fees are paid. The renewal
must be introduced by the current owner of the trademark, as
recorded at the National Register.
Renewals last for 10 years, starting at the expiration of the previous
registration period. In the event that an owner fails to renew its
registration, the registration expires and is withdrawn from the
Register.
Use
Proof of use may be furnished by all means. There is no other specification in the law limiting the means by which use may be
shown. However, use is usually established through application of the
: mark to brochures, samples, or invoices.
Use on a different or service than those designated by the
registration do not constitute use. However, use by a licensee constitutes
use by the licensor if made with the consent of the licensor. Use
in a slightly modified form may constitute use if such form does not
represent an alteration of its distinctive nature.
No declaration of use must be provided to the trademark office.
Failure to make genuine use of a mark without justification for an
uninterrupted five-year period may cause the mark to be cancelled.
According to recent case law, if the trademark has never been used,
the five-year period starts from the publication of the registration of
the trademark. Revocation takes effect on the expiration of the fiveyear
period and has absolute effect. Genuine use begun or resumed after
the expiration of the five-year period will not bar a cancellation
proceeding if the use was undertaken during the three months prior
to the request for revocation and after the owner has been aware of
the possibility of such a request.
Domain Names
The rules governing the registration and maintenance of domain
names, together with the guidance documents and, in particular, the
procedures manual, form a single contractual document called "The
AFNIC naming charter." When reserving a.fr domain name, one is
deemed to be aware of the rules and conditions of the AFNIC naming
charter. AFNIC is the Association Francaise pour le Nommage
Internet en Cooperation and is the registry for Internet domain names
ending in.fr for France and.re for Reunion Island.
Registration Procedure:
The following Individuals or corporate entities may register an.fr
first-level domain name:
(1) Corporate entities whose headquarters are located in France or
which have premises in France and which can be identified in
the following electronic databases: Commercial Court Registries,
National Corporate and Trade Register (INPI), National Institute of Statistics and Economic Studies (INSEE), REFASSO
for associations;
(2) State institutions and departments, regional authorities, and
their establishments;
(3) Individuals or corporate entities which hold a registered
trademark (French, Community, or International designating
France). The holder must justifjr its trademark right by furnishing
to the Registrar an extract of the National Institute of the
Intellectual Property (INPI) trademark database.
(4) Adult individuals with an address in France.
The following requirements must be met:
(1) The domain name must be available (to confirm availability of a
domain name, check the WHOIS database).
(2) The registrant must file its reservation request before a Registrar
which has concluded a membership agreement with the
AFNIC.
(3) The application must contain the name and address of the
holder as well as the name and address of an administrative
contact chosen by the applicant. '
(4) A reservation fee must be paid to the Registrar.
(5) Transmission of the application must be made from the Registrar
to AFNIC, which reserves the domain name under the rule,
"first come, first served."
(6) In addition to the checks carried out to register a domain name,
the AFNIC may, at its discretion or at the request of a third
party, check compliance with the terms of the Charter.
Enforcement
Several kinds of enforcement actions are available:
(1) Opposition proceedings against a trademark application.
(2) Infringement seizure (saisie contrefaqon).
Through this procedure, the owner of an application for registration,
the owner of a registered mark, and the beneficiary of an
exclusive right of exploitation are entitled to direct any bailiff, assisted
by experts of their choice, to proceed in any place with the
detailed description of the mark and goods and/or services, with or
without taking samples, to effect the seizure of the subject goods or
services. Such authority requires an order issued by the President of
the First Instance Court in response to a request by the rights holder.
(3) Infringement proceedings, before the Court .
Civil infringement proceedings may be instituted by the owner of
the mark. However, the beneficiary of an exclusive right of exploitation
(such as a licensee) may institute infringement proceedings unless
otherwise laid down in the contract. Such action by a licensee is
possible if, after formal notice to the owner, the owner does not
exercise such right. Any party to a licensing contract is also entitled
to participate in the infringement proceedings instituted by another
party in order to obtain remedies for harm that he has sustained or
stands to sustain if such harm continues. The infringement proceeding must take place within three years.
However, any proceedings for infringement by a later registered mark,
of which use has been tolerated for five years, is not admissible unless
the registration was applied for in bad faith. However, nonadmissibility
shall be limited to those goods and services for which use has been
tolerated.
(4) Cancellation action before the Court.
Preventing Counterfeit or Infringing Goods from Entering the
Country:
The owner of a French or Community registered mark or the holder
of an exclusive right of exploitation may request, in writing, that
customs authorities seize goods that are alleged to bear marks infringing
on the rights of the owner or exclusive right holder. The owner
must, within 10 working days of the withholding of the goods, provide
evidence of (1) a decision to withhold goods, taken by a court of first
instance, or (2) institution of civil or criminal proceedings, together
with the posting of a bond. Failure to provide such evidence will cause
the seizure to be cancelled.
Such seizure does not apply to goods legally manufactured or put in
the market in a member state of the European Union and intended to
be legally distributed in another member state of European Union.