You’ve started a business and would like to file a trademark with France’s National Institute of Industrial Property (“INPI”)? 

Here are the pre-filing steps we recommend: 

1. Choosing your trademark
2. Checking its availability by conducting an existing trademark search 
3. Selecting the goods and/or services to be covered by your mark
4. Determining the trademark holder
5. Planning for potential extensions of your trademark abroad 

Ideally, we advise that you call upon an IP professional to assist you.

Should you wish to make an appointment to discuss a potential trademark filing with us: 

Make an appointment or Contact Us 

Choosing your Trademark in France

A trademark is a sign capable of distinguishing the goods or services of a business from those of its competitors.

Trademarks come in various forms: a trademark can be a word, a slogan, a logo… 

To be valid, a trademark must satisfy certain criteria, including:

• It must be distinctive;
• It must not be descriptive of the goods or services it covers or their characteristics;
• It must not be made up of usual or customary terms;
• It must not be deceptive;
• It must be licit and not contrary to public policy.

When choosing a mark, it is important to examine its ability to allow the public to identify the origin of the goods or services in question. A strong or very distinctive mark is one that is arbitrary or invented, which has no connection to the goods/services for which it is used.

Conversely, a trademark which is suggestive does bear a connection to the nature of the goods/services or one of their attributes. In order to be a valid trademark, however, this connection must not be too strong. If, for the relevant public, there is a direct link between the mark and the goods or services it covers, the mark will most likely be considered descriptive, and its registration will be rejected.

Verifying the Availability of your Trademark in France by Conducting a Prior Rights Search 

What is a prior rights search?

A prior rights search aims to identify existing rights belonging to third parties which may conflict with yours.

Before filing and using a trademark, it is important to identify any existing trademarks held by third parties in similar lines of business. It is also advisable to check whether other potentially conflicting prior rights may exist (such as company or business names). We recommend contacting an IP professional to do so. 

If you wish, you may book an appointment or contact us by email.

Why conduct a prior rights search?

Registering a trademark does not guarantee the undisturbed use of said trademark. Contrary to other jurisdictions, in France, the IP Office (INPI) is not tasked with verifying a trademark’s availability. Only a prior rights search makes it possible to check whether your mark might infringe on existing third-party rights.

Without conducting a prior rights search, it is possible to file a trademark which is similar to a competitor’s trademark without knowing it. Such a situation can expose you to a potential infringement suit which could end up preventing you from using the mark (in addition to damages that may be due if you’re found liable for trademark infringement).

To avoid this situation, we strongly recommend conducting an analysis on the availability of the mark before filing your trademark.

If you are subject to opposition or infringement proceedings, our firm can assist you. You can book an appointment or contact us by email.

How do we conduct a prior rights search?

It is important to search not only for rights covering a sign identical to your mark, but also ones that are simply similar. 

Indeed, signs which differ by one or more letters can still be conflicting if there is a likelihood of confusion on the part of the public. 

For example: DREEP and DREEPY

Analyzing signs which are similar (and not only those which are identical) is therefore important. To do so, it is important to compare the signs in question, as well as the goods and services covered, to evaluate whether or not there could be a likelihood of confusion on the part of the relevant public, which includes the likelihood of association with the earlier trade mark.

To conduct this analysis, we advise that you entrust the prior rights search to an intellectual property professional.

Should you wish to call on our services, please contact us.  

It is also advisable to keep in mind the availability of domain names and social media accounts which you might consider using for the mark.

Choosing the Goods and Services to be Covered by the Trademark in France

The scope of protection provided by a trademark is dependent on the goods and services its registration covers. Indeed, a trademark is only protected for the goods and services covered by the registration, as well as similar goods and services.

Thus, the choice of goods and services is crucial. 

Please note: in France, it is not possible to add goods or services after filing the trademark. Filing a new trademark would be necessary (without the benefit of the priority date).Therefore, it is very important, prior to filing, to wisely select the goods and/or services to be covered by the trademark. 

We can provide assistance in the selection of goods and services.

Determining the Holder of the Trademark in France

It is possible to file a trademark in the name of the corporation which will be using the trademark or in the name of an individual (such as the founder).  This choice can have fiscal and legal consequences when it comes to raising capital with outside investors or in the event of a sale or merger. 

If the trademark is filed in the name of the company’s founder, a licensing contract should be established to allow the company to use the trademark.

Planning for Possible Extensions of your Trademark Abroad

Within the European Union

It is possible to file an EU trademark with the European Union Intellectual Property Office (EUIPO), which covers all territories within the European Union. 

Beyond the European Union

The Madrid System for the international registration of trademarks is a centralized filing process to apply for protection in multiple jurisdictions. With a single application, it is possible to obtain a title in one or more member-countries. 

What is the right of priority?

The right of priority makes it possible, within 6 months from the filing of a French trademark, to extend the trademark’s scope of protection to other jurisdictions in the Madrid System all while benefitting from the original French filing date.

That is why we recommend planning for the territories which may present a strategic interest for your trademark in the future.

Please note that it is still possible to register an international trademark after the expiration of this 6 month period. In that case, the international protection takes effect starting at the date of the application for the international trademark.

Our firm can assist you in defining your strategy when it comes to international protection of your mark: book a free call with us or contact us by email.

Are You Considering Filing a Trademark in France and want to Limit the Legal Risk ?

Our firm can advise and assist you with all steps before, during, and after the filing of your trademark. 

Before the filing, we can conduct a search of existing prior rights, covering both identical and similar trademarks, as well as business and domain names.

We can also assist you in the selection of the type of trademark, the choice of goods and services it should cover, determining the trademark holder and the related legal consequences. In the event of any irregularities raised by the French INPI or in case of third-party oppositions to the registration of your mark, we may also provide assistance before the French INPI. 

We also can offer our services after the filing of your trademark, including negotiating and drafting contracts related to your trademark (licensing contracts, assignment contracts, partnerships, formalities with the INPI…) and, if necessary, defending your trademark (drafting cease and desist letters, bringing an infringement case and preliminary measures before French courts…).

Contact us!

You can find out more about our costs to file a trademark here.

Photo credit: Jess Bailey on Unsplash

L’article What steps should be taken prior to filing a Trademark in France est apparu en premier sur Distique Avocats.

In addition to the required filing fees, a prior trademark search and analysis is strongly recommended at the pre-filing stage, in order to verify whether a potential conflict may exist between your proposed trademark and any existing similar or identical marks. 

Here is the breakdown of our fees and legal filing taxes, depending on the type of trademark you wish to register.

How much does it cost to file a French Trademark ?

To file a trademark in France, our firm’s fee is €300 (VAT excl.), i.e. €360 (VAT incl.), irrespective of the number of classes selected, and the filing fees with the Office are as follows: a base fee of €190 (which covers only one class of goods or services), and a fee of €40 per additional class of goods or services.

By way of example, to register a French national trademark in three classes of goods or services, the total cost would be €630 (our fee of €360 VAT incl. and Office fees of €270). 

Please note:

A French national Trademark is valid for 10 years. It can be renewed every 10 years, indefinitely.

To renew a French trademark, our firm’s fee is €300 (VAT excl.), i.e. €360 (VAT incl.), and the Office fees are as follows: €290 for a single class of goods or services and €40 per additional class.

Ask us for an estimate: contact us or make an appointment

How much does it cost to file a European Union (EU) Trademark ?

To file a European Union (EU) trademark, our firm’s fee is €750 (VAT excl.), i.e. €900 (VAT incl.), irrespective of the number of classes selected, and the filing fees with the Office are as follows: a base fee of €850 (which covers only one class of goods or services), a fee of €50 for the second class of goods or services, and €150 for the third class of goods or services or above.

By way of example, to file an EU trademark in three classes of goods or services, the total cost would be €1,950 (our fee of €900 VAT incl. and Office fees of €1,050). 

Please note:

An EU Trademark is valid for 10 years. It can be renewed every 10 years, indefinitely.

To renew an EU trademark, our firm’s fee is €750 (VAT excl.), i.e. €900 (VAT incl.) irrespective of the number of classes, and the Office fees are as follows: €850 for a single class of goods or services, a fee of €50 for the second class of goods or services, and €150 for the third class of goods or services or above.

Ask us for an estimate: contact us or make an appointment

How much does it cost to file an International Trademark?

The cost of filing an international trademark depends on the territories and the number of classes of goods and services covered. 

For an estimate, please contact us.

Costs for a prior trademark search

Before filing any trademark, it is advisable to conduct an in-depth prior rights search with the goal of identifying potential conflicts with prior right holders.

Our fees for conducting a prior rights search and analysis depend on the type of trademark and the number of goods and services it would cover, and generally varies between €500 and €1,500 euros (VAT excl.), for a search covering the French territory (i.e. between €600 and €1,800 VAT included).

For a detailed quotation, please contact us.

To learn more about existing trademark searches (also known as clearance searches) and other pre-filing steps we recommend, you can read our article on the topic here.

Photo credit : Braňo on Unsplash

L’article How much does it cost to file a trademark in France? est apparu en premier sur Distique Avocats.