I am a qualified lawyer in France with expertise in intellectual property law, particularly trademark law. I assist both companies and individuals with the process of filing trademarks in France.
My services include:
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Definition of goods and services: Assistance with drafting the specification in accordance with the practices of the relevant IP office, with a focus on how the wording may impact the availability and validity of the trademark.
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Verification of the sign’s validity: Especially regarding the requirement of distinctiveness, which is essential for successful registration.
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Clearance searches (a central task): In-depth analysis of the sign’s availability in light of prior rights, including the identification of potential risks linked to identical or similar trademarks.
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Trademark filing as your representative: Once the clearance search confirms that there are no significant prior rights, I can proceed with filing the trademark on your behalf.
Clearance Searches – An essential prerequisite to avoid trademark conflicts
Under French law, a trademark may not be registered—and is subject to cancellation—if it infringes upon earlier rights, including (but not limited to): a prior trademark, a company name, trade name, copyright, or domain name (Article L711-3 of the French Intellectual Property Code).
A trademark infringes an earlier right if it is identical or similar to that right and creates a likelihood of confusion among the public.
A trademark clearance search ensures that the sign intended for registration and commercial use is available and does not conflict with existing rights.
Unfortunately, it is not uncommon for applicants to be forced to abandon their trademark after months or even years of commercial use simply because they did not verify its availability beforehand.
Without a proper clearance search, the applicant risks legal action by a third party holding a prior right, who may:
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File an opposition to the trademark application before the French IP Office (INPI), or
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Initiate legal proceedings for trademark infringement or unfair competition.
Contact me to request a quote : nb@bressand-avocat.fr
FAQ – Frenquently Asked Question about French trademarks
What can be registered as a trademark in France? In France, you can register words, logos, sounds, 3D shapes, colors, and even smells. The key is that the sign must be capable of graphic representation and distinguish your goods/services from others.
Does a French trademark protect me throughout France, including overseas territories? Yes, a French trademark registered with the INPI provides protection across metropolitan France and its overseas departments and territories (DOM-TOMs).
What if my trademark is not in French? Do I need a translation? No, a translation isn’t required if your trademark isn’t in French. However, if the mark has a specific meaning in French that could be descriptive or misleading, it might face objections.
Can I register a slogan or a highly descriptive term? Slogans can be registered if they are distinctive. Highly descriptive terms directly indicating the quality, kind, or origin of goods/services are generally not registrable as they lack distinctiveness.
Are there any marks that cannot be registered (e.g., offensive, generic, misleading)? Yes, marks that are generic, immoral, deceptive, or contrary to public order cannot be registered. Also, marks lacking distinctiveness or infringing prior rights are excluded.
What documents do I need to submit for a French trademark application? You primarily need a clear representation of the mark, the list of goods/services classified under the Nice Classification, and applicant details. A power of attorney might be needed for non-EU applicants.
Can I file the application myself, or do I need a local agent/lawyer? While you can file yourself if you’re an EU/EEA resident, it’s highly recommended for foreign clients to use a local agent or lawyer. Non-EU/EEA residents are generally required to appoint one.
What are the official fees for filing a trademark in France, and are there additional costs for multiple classes of goods/services? Official fees start for one class (190 EUR), with additional fees for each subsequent class (40 EUR). Fees vary and are subject to change by INPI. Professional fees for an agent are separate.
How long does the trademark registration process typically take in France? The process typically takes about 5-6 months if there are no objections or oppositions. However, if issues arise, it can extend significantly.
What is the « Nice Classification » and how do I choose the right classes for my goods/services? The Nice Classification is an international system for classifying goods and services for trademark registration. You must carefully select the classes that accurately cover your current and future business activities.
What happens after I file the application? (e.g., examination, publication, opposition period) After filing, INPI examines it for formalities and absolute grounds. It’s then published in the Official Bulletin. A two-month opposition period follows, allowing third parties to oppose.
What if INPI (the French IP Office) raises objections to my application? How do I respond? If INPI raises objections, you’ll receive an official letter. You’ll have a deadline to submit arguments or amend your application to address the objections. Legal counsel is advisable.
Does a French trademark provide protection outside of France? No, a French trademark only grants protection within France. For international protection, you need to file separately in each country or via international systems like the EUTM or Madrid Protocol.
Should I consider a European Union Trademark (EUTM) instead of or in addition to a French trademark? What are the pros and cons? An EUTM offers protection across all EU member states via one application. Pros: wider coverage. Cons: « all or nothing » validity (if invalid in one country, it’s invalid in all). Consider both for robust protection.
How does the Madrid System work, and can I use it to extend my French trademark protection internationally? The Madrid System allows you to file one international application (through WIPO) designating multiple member countries. While you can extend, it doesn’t directly extend a French mark, but rather creates new national or regional rights.
If I’ve already filed a trademark in my home country, can I claim priority for my French application? Yes, if you file your French application within six months of your first filing in a Paris Convention member country, you can claim priority, meaning your French application will be treated as if it were filed on the earlier date.
How long is a French trademark registration valid, and how do I renew it? A French trademark registration is valid for 10 years from the filing date. It can be renewed indefinitely for subsequent 10-year periods by paying renewal fees to INPI.
Is there a « use requirement » for French trademarks? What happens if I don’t use my mark? Yes, there’s a use requirement. If your trademark is not genuinely used in France for five consecutive years after registration, it may be vulnerable to cancellation for non-use.
How can I enforce my trademark rights in France if someone infringes on it? You can send a cease and desist letter, file an opposition against a later application, or initiate legal proceedings for trademark infringement or unfair competition before French courts.
Can I license or assign my French trademark to another company? Yes, you can license your trademark (allowing another party to use it under certain conditions) or assign it (transfer ownership) to another company. These agreements should be in writing and ideally registered.
Are there other forms of intellectual property protection (e.g., copyright, design rights, patents) I should consider in France alongside my trademark? Yes, depending on your product or service, you might also consider copyright for creative works, design rights for product appearance, and patents for inventions. They offer complementary protection.
Contact me
📩 Please feel free to ask for a quote at :
nb@bressand-avocat.fr