In today’s competitive business landscape, protecting your franchise’s intellectual property through trademark registration in France is crucial for long-term success. This guide outlines the key steps and requirements for securing trademark protection for your franchise in France.
Understanding French Trademark Law
Trademark law confers a right of ownership over a distinctive sign. This right is conditional on a formal registration providing legal protection to the proprietors. At a national level, the National Institute of Industrial Property (INPI) plays a central role. As the main authority, INPI receives trademark filings and issues intellectual property titles
Trademark law in France is part of a dual regulatory framework, combining national legislation and provisions from the European Union. Two types of trademarks coexist in this framework :
- National trademarks : They are registered only in France.
- European Union trademarks (EUTM) : They are created under the EU Trade Mark Regulation, providing unitary protection across all EU member states.
Legal Framework
In France, the Code of Intellectual Property (CPI) protects distinctive signs like names, logos, symbols, and shapes. The CPI protects distinctive signs like names, logos, symbols, and unique elements such as sounds or shapes.
Legal basis : Articles L.711-1 et seq. of the CPI
Ten-year validity period with unlimited renewal options : Unlimited renewal offers legal certainty for companies aiming to protect their commercial identity long-term.
Legal basis : Article L.712-1 of the CPI
Priority rights based “first-to-file” principle : Priority is given to the first person or entity to have filed the trademark. This means that prior registration is essential to claim exclusive rights.
Legal basis : Article L.713-1 of the CPI
Internationally, the Paris Convention for the Protection of Industrial Property (CUP) plays a key role. However, the regulatory landscape of trademark law in France is heavily influenced by European norms :
- Directive (EU) 2015/2436 : It harmonizes EU member states’ trademark laws, enhancing trademark protection and recognition across Europe.
- The European Union Trade Mark Regulation (EU) 2017/1001 : It establishes a single framework for EU trade marks (EUTM), which offer unitary protection across the 27 member states.
These European sources complement and influence the Intellectual Property Code, ensuring consistency between national law and European obligations.
Specific Provisions for Franchises
In the context of a franchise, the brand plays a central role as a key element of the business identity and business model. In France, franchise businesses must meet several specific legal requirements :
Mandatory disclosure of trademark ownership in franchise agreements : The franchisor must prove that he is the rightful owner of the mark or that he holds the operating rights to it.
For registered mark : indication of the registration number with the INPI or EUIPO in the pre-contractual information document.
Legal basis : Article L.330-3 of the Commercial Code
Clear guidelines for trademark usage by franchisees : The franchise agreement must include clear clauses governing the use of the brand by franchisees to preserve the integrity of the brand and ensure consistency in its use.
The rights and limits of use of the brand
The obligations of quality and conformity of the goods or services sold under the trademark.
Legal basis : Articles L.714-1 et seq. of the CPI
Territory-specific protection considerations : Franchising is often based on a geographically organised distribution model, making territorial brand protection crucial.
Requirement of territoriality : The trademark must be exploited in the geographical area where it is protected to avoid risks of forfeiture for non-use.
Territorial Exclusivity Clause : It guarantees the franchisee that no other franchises will be opened in a given territory, thus reinforcing the commercial value of the brand in the region.
Legal basis : Article L.712-4 of the CPI
Registration Requirements
Eligibility Criteria
For a trademark to be eligible for registration in France, it has to meet several legal criteria. They aim to ensure that the trademark fulfills its distinctive functions while respecting the rights of third parties and public order requirements.
Distinctive character
The trademark has to be able to distinguish the goods or services of a company from those of other companies. It must allow the consumer to identify the commercial origin of the product or service. For example, a logo, word or symbol that is evocative but unique can be considered distinctive.
Possible refusal : Signs that are too generic, such as a common term or a banal expression directly related to products or services, will be rejected because they do not allow a clear differentiation in the market.
Lack of descriptive or customary character
A trademark cannot be descriptive or customary in relation to the goods or services it designates. This ensures that these terms remain usable by all market operators.
- Descriptive : Terms that simply designate a characteristic of products or services, such as their quality, nature or destination cannot be registered.
- Common : Signs commonly used in trade to designate the goods or services concerned are excluded from protection.
Legality
The mark must not violate public order or morals and must not be misleading or deceptive :
- Public order and morality : Signs that contain offensive, racist, or contrary to the fundamental values of society will be rejected.
- Misleading : A trademark must not mislead the consumer as to the nature, quality or geographical origin of the goods or services.
Availability
The mark must be available. In other words, it must not conflict with earlier rights. Before filing a trademark registration application, it is essential to conduct antecedent search to ensure that no similar or identical trademarks have been registered for similar goods or services.
Legal basis : Articles L.711-2 of the CPI and 7 of EU Regulation No. 2017/1001
Document Checklist
The filing of a trademark in France, whether with the INPI for national protection or with the EUIPO for a European Union trademark, requires the submission of a complete dossier that complies with the legal requirements :
- Completed trademark application form : This form must include information about the applicant and specific details about the trade mark.
- Clear representation of the trademark : A graphic or visual representation of the trademark enables its accurate identification.
- List of goods and services : The goods and services of the trademark need to be precisely indicated according to the Nice Classification, which is a standardized system that groups goods and services into 45 classes.
- Power of attorney (if the application is submitted by an agent or lawyer acting on behalf of the holder)
- Proof of payment for official fees
Step-by-Step Registration Process
The process of registering a trademark, in France or at European level, is based on several key steps. A clear understanding of these steps is essential to ensure the success of the application.
Pre-filing Considerations
Before initiating the registration process, some preparatory steps are essential to maximize the chances of success and avoid legal or technical obstacles :
- Choose a brand type : National trademark protects only on French territory and EU trademark provides uniform protection in all EU member states.
- Conduct comprehensive trademark research : It means searching and identifying pre-existing marks that may create a conflict or opposition in the national, European (TMview) or international (Madrid Monitor) databases.
- Determine the classification of goods and services : The Nice classification is used to describe protected goods or services.
- Assess territorial coverage needs : Consider potential extensions to other territories through the international procedure provided for by the Madrid Union.
Application Submission
The submission of a trademark registration application can be done through three main routes : national, european or international.
National Depository (France)
The national filing is aimed at individuals or companies seeking to protect their trademark exclusively on French territory. This procedure is managed by the National Institute of Industrial Property (INPI).
- Online application : The application has to be made online on the official INPI portal since paper submissions are not allowed.
- One trademark at a time : A mandatory clear graphic representation of the brand and a list of the goods or services concerned, using the Nice classification, have to be provided.
- Registration fees : The deposit costs €190 for a class of goods or services, with an additional €40 for each additional class.
Any natural or legal person residing in France or a national of a member state of the Paris Convention or of the WTO.
Legal basis : Article L.712-11 of the Code of Intellectual Property
European Depository (EU trademark)
If EU-wide protection is needed, it is possible to apply for a European Union trade mark (EUTM). The procedure is centralised by the European Union Intellectual Property Office (EUIPO).
- Online application : The submission of the application is only done online, directly with the EUIPO or via a national office, which forwards the application.
- One trademark at a time : The trade mark must be represented graphically, accompanied by the list of goods and services classified according to the Nice nomenclature.
- Language requirement : The language of application must be one of the official languages of the European Union, which includes French.
- Registration fees : The deposit costs €850 for one class, €50 for a second, and €150 for each additional class beyond the second.
Any person or entity meeting the criteria defined by the EUIPO, regardless of nationality.
International Depository (Union Madrid)
The international procedure, administered by the World Intellectual Property Organization (WIPO), allows global protection in several countries through a single application.
The applicant has to be a national, domiciled or established business in a member state of the Union Madrid.
Examination Process
National Route : Registration Process with the INPI
After submission, the INPI follows a structured procedure to ensure trademark conformity and protect third-party rights:
- Formal examination : INPI conducts a thorough review to verify mandatory elements and identify grounds for absolute refusal.
- Checks include distinctiveness, absence of descriptive terms, and compliance with public morals and order.
- If an absolute ground for refusal is identified, the application will be rejected in whole or in part.
- Published in the Official Bulletin of Industrial Property (BOPI) : The application is published in the Official Bulletin of Industrial Property (BOPI) within 6 weeks.
- Opposition period : A period of 2 months after publication is opened to allow any proprietor of an earlier trade mark to file an opposition. The INPI examines and rules on such oppositions.
- Final registration : The trademark is registered within six months of the application if no opposition is filed or rejected.
Legal basis : Articles L.712-1 and L.712-4 of the CPI
The European Way : Proceedings before the EUIPO
For applications for EU protection, the process is managed by the EUIPO and follows similar steps to those of the INPI, with some specificities specific to EU law :
- Formal examination : EUIPO first checks that all mandatory particulars are present in the application. It then carries out a thorough examination of the absolute grounds for refusal. A background search is also carried out and presented in the form of a research report.
- Publication in the EU TradeMark Bulletin : The application is published in the EU Trade Mark Bulletin, allowing third parties to become aware of the application.
- Opposition period : Any previous rights holder in the EU can file an objection within 3 months of publication. The EUIPO is then responsible for ruling on the admissibility and relevance of such objections.
- Final registration : The trademark is registered within six months of the filing of the application, if no opposition is filed or the opposition is rejected.
Protection and Maintenance
Trademark Rights
Once registered, the trademark confers on its owner several exclusive and powerful rights, which are essential to protect its identity in the market.
- Exclusive rights in France : The trademark holder can prevent any unauthorized third party from using an identical or similar mark for similar goods or services in France.
- Duration of protection : The trademark is valid for a period of 10 years from the date of filing of the registration application and this period can be renewed indefinitely.
- Basis for enforcement against infringement : The trademarked holder has the possibility of recourse to the competent court in case of infringement, thus ensuring protection against illegal use of the mark.
Legal basis : Article L.712-1 of the CPI
Renewal and Maintenance
In order to maintain trademark protection, it is necessary to follow certain essential steps of renewal and monitoring.
- Renewal registration every 10 years : Trademark protection can be extended indefinitely coince it is subject to renewal every 10 years.
- Renewal involves payment of the costs associated with the INPI.
- Renewal has to be carried out in the year preceding the end of the protection period.
- Monitoring of unauthorised uses : The proprietor of a trademark must actively monitor its use to prevent counterfeiting or unauthorized use.
- Unauthorized use of the trademark : The trademark holder may request that such acts be stopped, including in commercial transactions.
- Infringement : The trademark holder has the right to take legal action to obtain financial reparations or stop the unauthorized use of the trademark.
- Maintaining the proper trademark usage in franchise operations : Franchisors must ensure that the mark is used consistently, in all territories where it is protected, and comply with the usage guidelines set out in the contract.
International Considerations
Cross-border Enforcement
Implement effective enforcement strategies:
- Monitor international markets : It is crucial to keep track of the brand’s use in various global markets. This includes identifying potential infringements or unauthorized uses and taking appropriate actions to protect the brand on a worldwide scale.
- Coordinate with local legal representatives : Collaborating with intellectual property lawyers in each jurisdiction ensures a timely and effective response in case of violations. These experts can also offer advice on local practices and legal procedures to safeguard the brand.
- Maintain consistent brand protection policies : It is important to establish uniform policies for brand protection both nationally and internationally. This includes protocols for handling counterfeiting and strategies to train franchisees and partners on correct brand usage.
Conclusion
Securing trademark protection for your franchise in France requires careful planning and attention to detail. By following this guide and working with qualified legal professionals, you can ensure robust protection for your franchise’s intellectual property rights.
Ready to protect your franchise trademark in France? Contact a qualified trademark attorney or INPI directly to begin the registration process.
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