Trade mark filing

A trade mark filing is the formality by which a person applies for the registration of a sign as a trade mark for specified goods or services. Under French law, ownership of a trade mark is acquired by registration, in accordance with Article L. 712-1 of the French Intellectual Property Code, and the application is filed with INPI. Registration takes effect from the filing date, for a period of ten years renewable indefinitely. An application may also be filed with the EUIPO for an EU trade mark or through the international route of the Madrid system.

Content of the application

The application for registration, filed online, contains the identification of the applicant, the representation of the trade mark, which must make it possible to determine precisely and clearly the subject matter of protection, the list of goods and services according to the Nice Classification and, where applicable, a priority claim. The applicant may be any natural or legal person, with no requirement as to nationality or business, and need not show any interest in filing, although it risks invalidity for bad faith filing if it pursues an aim unrelated to the function of a trade mark. Payment of the fees, calculated per class, is a condition of admissibility. The filing date is accorded when the application contains the minimum elements required, and it is that date which establishes the seniority of the trade mark.

Course of the procedure

The application is published in the Official Bulletin of Industrial Property (BOPI), then undergoes examination by INPI, which checks the formal requirements and the absolute grounds for refusal, without examining earlier rights of its own motion. From publication, third parties have two months in which to file an opposition or submit observations. If there is no opposition or rejection, the trade mark is registered and the registration is published, the owner receiving a certificate. The overall timeframe ranges in practice from a few months, where nothing goes wrong, to more than a year where an opposition is filed.

Preparing the filing

The filing commits the owner for ten years, and the specification of goods and services cannot be broadened afterwards, so that preparation is decisive. A prior rights search covering trade marks, company names, trade names and domain names avoids a filing doomed to opposition or invalidity. The choice between a word mark and a semi-figurative mark, the territorial scope, whether national, European or international, and the timing of the six-month priority period opened by the Paris Convention are settled at this stage. Filing in the name of the right entity, and not that of a director or an agency, avoids later difficulties over ownership.

Key points

Filing with INPI creates the trade mark right on the filing date, for ten renewable years, after examination of the absolute grounds and, where applicable, opposition by third parties within two months of publication. The sign, the specification and the territory fixed on filing cannot be broadened thereafter. Precede every filing with a prior rights search, draft a precise specification that nonetheless covers foreseeable developments, and file in the name of the entity that will exploit the trade mark.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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