Examination of the trade mark application

Examination of the trade mark application is the stage of the registration procedure during which the office checks that the application meets the formal requirements and that the sign can be adopted as a trade mark. Before INPI, examination covers the regularity of the application and the absolute grounds for refusal in Article L. 711-2 of the French Intellectual Property Code. It does not cover third parties’ earlier rights, whose defence is left to opposition and to the invalidity action. The EUIPO proceeds in the same way for the EU trade mark, on the basis of Article 7 of Regulation (EU) 2017/1001.

Subject matter of the examination

The examiner first checks that the application contains the required elements, namely the identification of the applicant, the representation of the sign, the specification of goods and services and payment of the fees, and may invite the applicant to remedy material irregularities or to clarify an insufficiently clear specification. The examiner then assesses the sign against each absolute ground, considering in particular whether it is distinctive, whether it is descriptive or customary, whether it consists of a functional shape, whether it is contrary to public policy or whether it is deceptive, by reference to the goods and services designated and to the relevant public. Examination of the absolute grounds is carried out independently of marks already registered, so that the earlier registration of a comparable sign confers no right to registration.

The inter partes exchange

Where the examiner considers that a ground for refusal applies, the applicant is notified of a reasoned, provisional objection and given a time limit to submit observations, amend the specification or prove distinctiveness acquired through use. The applicant may also withdraw or divide the application. At the end of this exchange, the Director General of INPI rejects the application in whole or in part, or accepts it. Partial rejection is common, the sign being refused for the goods it describes and accepted for the others. The rejection decision may be appealed to the competent court of appeal within one month of its notification. Before the EUIPO, a refusal by the examiner may be challenged before the Boards of Appeal, then before the General Court of the European Union.

Limits of examination

Examination does not guarantee the validity of the trade mark. Absolute grounds dismissed by the examiner may be raised again by any interested person in an invalidity action, before INPI or before the court, with no time limit for most of them. Earlier rights are not examined, so that a trade mark registered without incident may be declared invalid at the request of the owner of an earlier mark or sign. The strength of the title therefore depends more on the care taken in preparing the filing than on the examination itself.

Key points

INPI examines the form of the application and the absolute grounds for refusal, but not earlier rights, in an exchange with the applicant that may end in total or partial rejection, open to appeal before the court of appeal. Registration cures no defect, and the trade mark remains exposed to invalidity. Respond precisely to objections, offer restrictions of the specification rather than suffer a rejection, and never infer from registration that the title is unassailable.

---

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.

Intellectual property attorney · Tell us about your situation