Understanding and securing trademark protection is crucial for long-term success for foreign businesses looking to establish their franchise presence in France. This comprehensive guide walks you through the essential aspects of trademark registration and protection in the French market.

Understanding French Trademark Law

Trademark law grants its holder an exclusive monopoly over a distinctive sign. However, this exclusive right supposes the proper filing and registration of the sign with a designated authority. In France, two primary trademark protection systems coexist : national trademarks and European Union Trademarks (EUTMs). This dual system reflects a multi-layered legal framework under national, European, and international regulations.

Key Legal Provisions

The trademark regulatory framework sets conditions for registration, defines owner rights, and provides dispute resolution mechanisms for consistent protection:

  • The French Intellectual Property Code (IPC) : It is the core of national trademark regulation, defining registration conditions, proprietor rights, nullity causes, and infringement actions.
  • 2017 EU Trademark Regulation (EUTMR) : It ensures unified protection across all EU Member States through a streamlined procedure administered by the European Union Intellectual Property Office (EUIPO).
  • 2015 European Directive on National Marks : It aims to harmonize national trademark laws across the EU, covering areas such as grounds for refusal, the rights of proprietors, and procedures for revocation or invalidation.
  • Paris Convention for the Protection of Industrial Property (CUP) : It establishes fundamental principles such as the right of priority and protection against unfair competition.

Management and enforcement bodies

In France, the entities responsible for administering and enforcing trademark rights play a critical role in safeguarding the interests of trademark holders. These bodies are instrumental in facilitating registration, monitoring unauthorized uses, and resolving disputes while ensuring fair practices.

Registration Process

The trademark registration process in France involves key steps to ensure legal protection, helping businesses safeguard their brand identity and prevent unauthorized use.

1. Pre-Filing Search

Before applying for trademark registration, conduct thorough research to ensure your mark doesn’t infringe on existing rights. A trademark is available if it doesn’t replicate or imitate a prior mark for identical or similar goods, services, or activities.

You need to search and identify pre-existing marks that may create a conflict or opposition in the national European (TMview) or international (Madrid Monitor) databases.

For further information, you can refer to « the availability search » on INPI website

2. Application Preparation

To successfully register a trademark in France, your application must include several documents. These documents help the French National Institute of Industrial Property (INPI) assess the validity of your application and establish your trademark rights :

Clear representation of the trademark : This refers to a precise visual or graphic representation of the trademark you wish to register.

The trademark could be a word, logo, slogan or a combination of these. 

The representation has to be clear, accurate, and capable of distinguishing your goods or services from others. 

List of goods and services using the Nice Classification : Your application must specify the goods and services for which the trademark will be used, organized according to the appropriate class number.

The Nice Classification is an international system used to categorize goods and services for trademark registration purposes. 

There are 45 classes in total : 34 for goods and 11 for services. 

Applicant details and documentation : This includes the personal or business information of the applicant (the person or entity applying for the trademark).

The application must clearly state the applicant’s name, address, and nationality. If the applicant is a business entity, additional documentation may be required, such as proof of incorporation or registration. 

Payment of official fees : The application process requires payment of a fee to the relevant trademark office. This fee varies depending on the type of application and the number of classes of goods or services being registered. 

3. Application Submission

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

4. Examination Process

Once the application has been submitted, the INPI follows a structured procedure in several stages aimed at guaranteeing the conformity of the trademark and allowing the rights of third parties to be protected :

  • Formal examination : INPI conducts a thorough review to check for mandatory elements, distinctiveness, and compliance with public order. If grounds for refusal are found, the application is rejected.
    • This includes checks regarding the distinctiveness, the absence of descriptive or misleading terms and the respect for good morals and public 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) : This publication is done within 6 weeks of receipt and makes the application accessible to the public.
  • Opposition period : A 2-month opposition period follows publication, allowing earlier trademark owners to challenge the application. INPI reviews and rules on oppositions.
  • Final registration : The trademark is registered within 6 months if no opposition is filed or if the opposition is rejected.

Legal basis : Articles L.712-1 and L.712-4 of the IPC

Special Considerations for Foreign Franchises

Foreign franchises must pay particular attention to alternative registration options, as there are two additional routes that offer broader protection beyond the national territory.

EU Trademark Protection

Application Submission 

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. 

Examination Process

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.

International Registration

Administered by the World Intellectual Property Organization (WIPO), the Madrid System offers a cost-effective way to protect your trademark in multiple jurisdictions, including France. Indeed, this international procedure 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. 

Common Challenges and Solutions

Language Requirements

All trademark applications in France must be submitted in French. This language requirement extends to all supporting documents, including contracts, declarations, and evidence of use, which can lead to misinterpretations or errors. 

Solution : Franchises should engage professional translation services with expertise in intellectual property terminology. Collaborating with bilingual legal professionals ensures the accuracy of documents while maintaining their intended legal meaning. This approach minimizes errors and helps avoid procedural delays.

For more information on language requirements for trademarks, you can refer to this article from IP-Talk.

Legal Representation

For the national registration process, foreign applicants not established or not domiciled in France or in one of the member states of the European Economic Area (EEA) must appoint a representative domiciled in France to represent them before the National Institute of Industrial Property (INPI).

For the other registration process, the appointment of a local representation is not mandatory. However, the absence of local legal representation can leave foreign applicants vulnerable to procedural mistakes or a lack of understanding of the French legal framework. Without local expertise, navigating the French IP law can become highly challenging.

Solution : Hiring a local trademark attorney is a practical solution. These experts are familiar with the French Intellectual Property Code, INPI procedures, and enforcement mechanisms. For franchises operating internationally, a local attorney can also coordinate with global counsel to develop cohesive protection strategies.

Legal basis : Article R.712-2 of the IPC

Enforcement and Maintenance

Monitoring and Enforcement

To effectively protect trademark rights, proactive monitoring and swift enforcement are crucial. Trademarks holders must remain vigilant and responsive to ensure their trademarks are not infringed upon or misused in any way :

  • Regular monitoring for potential infringement : Trademark holders, especially international franchisors, must continuously monitor the market to identify any unauthorized use of their brand.
    • Market Surveillance
    • Online Monitoring Services
    • Trademark Watch Programs
  • Swift action against unauthorized use : Taking quick and effective action against an infringement is crucial to put an end to it.
    • Cease-and-Desist Letters
    • Injunctions
    • Legal Actions for Trademark Infringement
  • Collaboration with French customs authorities : This partnership allows trademark holders to take action against the importation of counterfeit goods. Indeed, customs agents have the power to seize goods that are suspected of infringing trademarks.
    • Customs Monitoring
    • Customs Seizure Procedures

Legal basis : Article L.716-4-6, L.716-4-10 and L.716-4-11 of the IPC

Renewal Requirements

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. It 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.

Legal basis : Article L.712-1 of the IPC

Dispute Resolution

When a trademark owner faces infringement in France, there are several legal remedies available to enforce their rights. These remedies are designed to halt unauthorized use, compensate for damages, and prevent further harm to the trademark holder’s business :

  • Cease and desist orders : It is a legal request issued by a French court that requires the infringer to immediately stop using the trademark without authorization. If the infringer fails to comply with the order, additional penalties, including financial sanctions, may apply.
  • Damages compensation : The trademark holder is entitled to compensation for damages resulting from the unauthorized use of their trademark.
    • Damages can be calculated using two methods :
      • an estimated assessment based on actual losses 
      • a lump-sum estimation of the benefit gained by the infringer through their unlawful use.
  • Legal basis : Article L.716-4-10 of the IPC
  • Seizure of counterfeit goods : It is a remedy to prevent the distribution of goods that infringe on a registered trademark.
    • The French customs authorities can intercept counterfeit goods at the border by themselves or on the request of the trademark holder.
    • If goods are seized, the trademark holder can seek their destruction or removal from the market, ensuring that counterfeit products do not circulate in the economy.
  • Legal basis : Article L.716-4-11 of the IPC

Conclusion

Protecting your franchise trademark in France requires careful planning and ongoing management. Early registration, proper maintenance, and vigilant enforcement are key to successful trademark protection in the French market.

For the best results, consult with qualified French trademark attorneys early in your market entry planning. They can help navigate the complexities of French trademark law and ensure comprehensive protection for your franchise brand.

Harley Miller Law Firm ”HMLF”

Head office: 14th floor, HM Tower Building, 421 Nguyen Thi Minh Khai, Ward 05, District 3, Ho Chi Minh City.

Phone number: +84 937215585

Email : [email protected]

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