This article is written by Amruta Pai who is pursuing a Certificate Course in Intellectual Property Law and Prosecution from LawSikho.
A trademark is a sign which makes goods or services different from other enterprises for identification. Intellectual property rights protect brands. The Trademark is given an exclusive right to the use of the registered Trademark. Hence, it indicates that the Trademark can be exclusively used by its owner/licensed to another party for use in return for payment.
The term of trademark registration is nominal for ten years; the same is renewable for another period of 10 years. It depends on the additional payment fees. It is used as rights for private rights, and protection is enforced through court orders. Trademarks can be registered for a word or combination of words, letters and numerals to constitute a trademark. It consists of drawings, symbols, three-dimensional features for the shape and packaging of goods etc.
One can register a combined trademark that includes elements, figurative elements like text or logons, etc. The exclusive right to use a Trademark has limits to extend that of the Trademark in the extent of configuration on the way it is filed and registered. Hence, it is recommended to file separate read marks for covering the word and figurative elements and any other science slogans or any other artistic element used to protect both the trademarks separately.
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The Trademark in France is obtained through registration at the National Institute of Industrial Property (INPI) for French trademarks. Trademark to be registered across European Union at the European Union Intellectual Property Office (EUIPO). Trademark to be used internationally at the World Intellectual Property Organization (WIPO).
The enactment related to Trademarks governed in France is compiled in Book VII of the Intellectual Property Code (IPC), a revised periodical. The French government agency has participated in many international agreements related to trademarks, whose provisions may be applied by French courts directly.
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The main ones are:
- Trade-Related Aspects of Intellectual Property Rights 1994, member binding to World Trade Organization (WTO) to fixed minimum required standards of protection;
- the Paris Convention of 1883, which has moderately blended trademark law and lay down the right of priority;
- the Madrid Agreement, in 1891, and its Protocol of 1989, both of which inaugurated international trademarks;
- the Nice Agreement of 1957 installed an international classification of goods and services; and
- the Singapore Treaty of 2006 blended made the administrative trademarks registration procurements compatible.
The authorities which conduct the registration of trademark processes in France is INPI. The agency performs the activities for registration and maintaining the Trademark name’s journal, which may be available to use and any dispute arising on the same to be settled. The registered trademark names are published in the journal named BOPI, meaning French Official Bulletin of Industrial properties.
The procedure to file a Trademark in France is effortless and time-efficient, around four to six months. The entire filing process till procurement trademark is divided into three steps: first pre-filing process, the time from filing till publication, and third, lastly, the Trademark registration.
The commencing steps here have to be decided to apply NIPI for a single class of the good and services or Multiple-class of the good and services. The application fees depend on the single or multiple types of goods and services. The application can file for more than ten items per class which may be of broad specifications such as “cosmetics”, “clothing”, etc. Before applying for a particular trademark name, the applicant must search the potential Trademark in relevant databases.
Filing to Publication
The second step application for a Trademark before the NIPI conducts the registration and examination of the Trademark. There is a need for some minimum requirements to secure the filing date, which needs to be satisfied. The application must contain the applicant’s information and representation of the potential Trademark and the priority claim, if applicable, and payment of the application’s fees.
After the application’s filing, the same get a filing date, and the official number is assigned by the French Registry (INPI). The applied Trademark is examined to comply with the formal requirement. After completion of 6 weeks generally, INPI, i.e. the French Registry, shall publish the Trademark filing application in the Official Bulletin. From the date of publication within two months, from that date of publication of in journal, there shall be oppositions or observations within two months, or third parties may file comments.
The French Registry proceeds with examining the filed TM application and can issue an objection if there are absolute grounds of refusal. In case of relative ground for rejection, the Registry shall inform the possible observations or opposition against the TM from third parties. In the case of multiple class TM applications, there can be a divisional application so that one of two TM applications can be registered, which remain unaffected by third parties. If a trademark has not been used for five years from the registration, it can be cancelled on a third-party request filed with the Registry.
France jurisdiction is known as “first-to-file”, defined as the rights to a trademark is granted to the first person to file it before the Registry, not the first person who uses Trademark. It’s unnecessary to use the Trademark before registration since it does not help with the objections raised on the lack of distinctiveness.
The response filed within the set period after the raising of opposition. There must be clarification of the specification of goods and services during the procedure; either limit the specification or withdraw the application, either partially or totally. Hence, either the application is withdrawn or restricted to goods and services against which the opposition is not directed. Therefore, the settlement scope between the parties or the application is rejected in parallel proceedings, and the opposition proceedings shall be closed.
After opposition, if the dispute is still not resolved, then the appeal filed before the Special Court has jurisdiction on the territory where the claimant resides. Thus the civil litigation raise obstacle has arrived in the way of registration of the Trademark. The Civil ligation can resolve either before the appropriate forum or through method alternative dispute resolution (ADR). ADR is preferred over forums since it is impossible always to get a revocation order against the Trademark. Hence, mediation is obtained since it is confidential and there is room for negotiation.
If there are issues even after the objection raised in the registrar, the special court shall handle the same, resulting in an order of infringement or order in the application change. This remedy in the civil litigation is infringement or financial compensation, or the special court shall grant a probation order. The injured party, in the case of violation of the Trademark, can request a lump sum. The lump sum in the form of damages for the number of royalties paid if the influencer had applied for authorisation to the French writing this lump sum is not exclusive of the compensation for moral damage caused to the injured party in the lawsuit.
The civil trademark litigation is coming in light of specialised courts’ exclusive jurisdiction; criminal trademark litigation cases are held before general criminal law courts. In both the civil and criminal law cases, the jurisdiction will rule on the issue and grant any appropriate remedies, which often include damages, injunctions not to be used and publications. Also, the defendant may file any trademark invalidity or frivolous proceedings counterclaim in the same proceedings. The Interlocutory proceedings may be sought before or during trademark proceedings on the merits.
The reason for a civil lawsuit in trademark application can be out of trademark infringement of a particular product or service, which may lead to confusion of identical products in the market. Mother scenario can be a case of unfair competition, which might be for misleading or inequitable trade practice among the two competitive brands or Trademark a name similar to each other.
If there is no case of opposition or the same is resolved before Registry, then the Trademark registration can occur. After this, INPI shall grant and publish TM registration in the Official Bulletin. During publication, NIPI sent the Registration Certificate by the end of 6months of filing the TM application. The TM registered for ten years from the date of applying. After the same renewal for ten years, the renewal request is filed from 6 before the expiration date.
Therefore, this summarises the Trademark filing in France, which is the most straightforward and time-bound manner, which makes filing the Trademark easier and less complicated. The procedure of filing a Trademark in France is subject to the European Union rules and regulation in case. The Trademark has to be registered across the UK Europe recent Brexit, there is a good chance the laws relating to the grant of trademarks in France might be affected, and there might be a change in the process. The entire procedure for applying and fronts tanks with east is very simplified and modified for easy application.
The only disadvantage of this procedure is that the one who uses prior the registration where the trademark is granted to the one who applies the first which may be unfair to one who has been using the TM since a long time but failed to file for the TM prior.
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