The new measures of trademark in France come into effect as date of 11, December 2019, except for the cancellation procedure that will begin on April 1, 2020.
The biggest change of the new measures is fee increase.in trademark.
Here is the comparison between the current officials fees for trademark application, renewal and the new official fees as of date 11, December 2019.
According to the table, the application and renewal fee is quite different from before. In the past, the application fee €210 is for 3 classes which means no matter an applicant apply for 1 class or 3 classes, the official fee is still €210. But the new fee doesn’t inclde 3 classes any more. It divides into the first class €190 and €40 for each additional class. Renewal is the same, renewal fee also doesn’t include 3 classes but divides into first class and each additional class.
申請和續展費用與之前截然不同。 過去，€210的申請ζ 費可包含3個類別，也就是說無論申請人申請1個或3個類別，規費皆為€210。但是新費不再包含3個類別，新費首類為€190，增類為€40。續展也同樣如此，如今續展費用也不再包含三個類別，而是分為首類，次類。
1.What can be registered as a trademark?
a. A sign capable of being graphically represented and distinguishing the goods or services of an undertaking from those of another;
b. Denomination in all forms, such as words, combinations of words, surnames and geographical names, pseudonyms, letters, numerals and abbreviations;
c. Audible signs, such as sounds and musical phrases;
d. Figurative signs, such as labels, logos, shapes and combinations or colour.
2. What information is needed to register a trademark?
a. The name and address of the applicants;
b. An image of the mark being claimed as a trademark and a description thereof;
c. A list of goods and/or services under Nice Classification;
d. A document confirming payment of the official filing fee.
3. What is the general procedure for trademark registration?
The applicant must file an online registration form. The French Office shall review the application and check if the mark complies with the formal requirements and absolute grounds for refusal, the application shall be published within six weeks following the filing. In case of non-compliance, the French Office will notify the applicant the objections raised and give a certain period of time to amend the application filed or reply to the French Office’s observations.
Within two months following the publication of the application, any third party can file opposition. Unless opposition is filed, the French Office shall allow the registration of the trademark within 6 months following the application, publish the registration and issue the corresponding certificate of registration.
4. Can a trademark acquire distinctiveness through use?
Distinctiveness can be acquired before and/or after the trademark’s registration.
5. How long on average does registration take?
Provided that no official actions and no objections by third parties are raised, the registration of a trademark takes, on average, 6 months.
6. Is there more than one way to obtaining a registration in France?
A French trademark can either be registered before the French Office or via the Madrid system with the filing of an international trademark application designating France.
7. What are the relative grounds of for refusal of registration?
a. An earlier registered or well-known mark;
b. A company name, where there is a risk of confusion in the public mind;
c. A protected appellation of origin;
d. Rights deriving from a model or a design; and
e. Personality rights of a legal person, particularly his surname, pseudonym or likeness.
8. Are there ways to overcome a relative grounds refusal?
a. Argue that there is no risk of confusion between the trademark applied for and the earlier sign;
b. Bring invalidity proceedings against the prior trademark;
c. Limit the application to some goods and/or services;
d. Negotiate a co-existence agreement with the owner of the prior right.
9. On what grounds can a trademark be opposed?
a. The trademark is confusingly similar or identical to a previously registered trademark or a famous mark;
b. A right over the name, image or reputation of a prior appellation of origin or geographical appellation;
c. A right over the name of a local territorial authority or a geographical indication.
10. What is the procedure of opposition?
Opposition can be filed before the French Office within 2 months from the publication of the trademark application.
The opposition shall notably specify the identity of the opponent; the nature, origin, and scope of the prior rights claimed; the references of the application against which the opposition is filed and the list of goods and services.
The statement of grounds of opposition, establishing notably the likelihood of confusion between the signs. In this respect, it can be underlined that the likelihood of confusion must be globally assessed taking into account all relevant factors, including the distinctiveness, the well-known character or the degree of recognition of the earlier trademark as repeatedly reinstated by the French Supreme Court.
The opposition is notified to the applicant, who is granted a delay to submit counter-observations. Upon these counter-observations, a draft decision will be proposed by the French Office. Both the opponent and applicant will be able to file observations on the draft decision to request a pleading date. Absent any observations, the French Office’s draft decision will become final and such draft will constitute the decision.
Unless the proceedings are stayed, the French Office’s decision must be issued within 6 months from the expiry of the opposition deadline and can be appealed before the Competent Court of Appeal.
11. What is the term of a trademark? How about Renewal?
The mark is valid for 10 years from the filing date of the application. An application of trademark renewal maybe filed not more than 6 months before the expiration of the registration and the grace period is 6 months.
WPIP will continuously make efforts to provide you with more IP news.