Séverine E. Mas Avocat
trademark France

French system for trademark protection

The system for trademark registrations in France has been modified in the last few years, due to the impulsion of the European law. As a consequence, it is easy to understand and very similar to the European system.

Some important differences can however be highlighted. One of them is that in France, counterfeiting of a prior trademark is recognized as soon as the filing of the posterior trademark is made. It is a huge difference, as in the European system, the infringement is recognized only when the trademark has been exploited for commercial purposes.

One of the common mistakes made by the trademark users coming from a common law system, is to believe that the trademark is protected as soon as it is exploited in commerce. This fact, which is true in a common law system, is not in a civil law system (and in France in particular).

As a matter of fact, the owner of a sign not registered as a trademark may have rights to sue the user of a confusingly similar posterior sign, for unfair competition (but not for trademark infringement). This is not true any more, when the posterior user registers the sign as a trademark in France. In the latter case, the prior owner becomes the infringer, unless he can prove that the trademark has been registered in bad faith. This is almost impossible in most cases.

As a conclusion, it is highly advisable to register a trademark in all the countries where a sign is exploited, in order to avoid expensive law suits, or even worse, to avoid to loose the right to use its own trademark.

Filing of a trademark application in France

Foreign companies or persons not residing in France, in the EU or in the EEE, cannot file directly at the INPI office for registration in France. Instead, they must chose a trademark Attorney in France, in order to represent them. The trademark Attorney will receive all correspondence sent by the office (INPI), and will be able to advise the client for the best of its interests. The taxes for filing an application in France are 225 euros for three classes of products and services.

Duration of Registration; Renewal

A trademark registration in France is effective for 10 years. It may be renewed for further periods of 10 years on payment of the prescribed fees.