Overview of France Trademark Registration Service

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.