International Trademarks

The Madrid Arrangement and Protocol permit to simplify filing procedures of trademarks in many countries of the world.

THE MADRID ARRANGEMENT AND PROTOCOL

The Madrid system for registration of International trademarks is regulated by two treaties : the Madrid Arrangement, of 1891, and the Madrid Protocol, in force since April 1st 1996.

The International trademark allows, through a single procedure, to obtain registration in more than 82 States or Intergovernmental Organizations, to be chosen in the list of signatories of the treaties.

These member states can be bound by either the Arrangement or the Protocol, or by both.

France is a member of both the Arrangement and the Protocol; therefore, it can be designated in an International application originating from any of the states, either on the basis of a registration (Arrangement) or of an application (Protocol).

The European Union is also part of the Madrid system but is only a member of the Protocol : therefore, it can be designated in an International application originating only from a country member of the Protocol (knowing that the country can be part only to the Protocol or to both the Protocol and the Arrangement).

For instance, The United States of America and Japan are only members of the Protocol whereas China is a member of both the Arrangement and the Protocol : France and the European Union can nevertheless be designated in an International application based on an application/registration from all these countries.

PROCEDURE REGARDING FRANCE

- Examination

Once the International trademark has been examined by WIPO, it is transmitted by the last to the French Patent and Trademark Office, which will proceed with the examination of the trademark according to the French regulations.

Applications are examined as to form and substance. The substantive examination relates however only to the descriptive or deceptive nature of the trademark. The Office does not ascertain whether the trademark is available or "new".

After verification to ensure that the trademark is distinctive and that the goods or services to which the trademark applies for are properly identified, the application is published by the Office.

During a period of two months following the date of publication of the trademark, third parties have the right to file observations or oppositions with the office.

If no oppositions or observations are filed, the trademark is registered.

Notice of registration is published in the French Official Journal of Industrial Property (BOPI).

- Observations by third parties

Observations may be filed by persons owning signs other than earlier trademarks, such as company names, trade names, company signs, protected appellations of origin, copyrights, rights deriving from registered designs or models, personal rights of third parties, family names, pseudonyms or images, or the name, image and reputation of a local area. Such observations are immediately passed on to the applicant unless they appear to be unfounded.

Third parties may also file observations disputing the distinctive character of the sign applied for, or regarding its deceptive or misleading nature.

If these observations are well-founded, they may result in a decision by the Office to refuse registration.

- Opposition procedure

The opposition procedure allows the owner of an earlier trademark, or his exclusive licensee, to hinder the registration of a trademark that is confusingly similar with his earlier registered trademark.

The opponent must file at the French Office, within a period of two months following the date of publication of the trademark application, a notice of opposition which must be supported by documentation substantiating the rights cited: certificate of filing or registration of the prior trademark and evidence of use if the trademark has been registered for more than five years at the time the opposition procedure is instituted.
An opposition can only be based on a single prior trademark. In case of several prior trademarks, several oppositions must be filed.

The opposition is notified to the applicant for the contested trademark, who is allowed a certain period of time within which to file observations in response.

The French Office then publishes a preliminary decision, which is notified to the parties and becomes final if neither party files observations in response. If observations are filed, the preliminary decision is submitted to a Board set up by the French Office, before which the parties can present their observations orally.
A final ruling is then given by the Office, accepting or rejecting the opposition. The contested trademark application may also be maintained with amendments, usually relating to the list of goods and services.

The opposition procedure will be suspended:

  • If the earlier trademark right is based on an application for pending registration.
  • If the earlier trademark right is the subject of an action for invalidity, revocation or claim of title before the courts. This may be the case if the applicant for the contested trademark decides to defend himself by filing a counter suit before the court requesting the revocation of the earlier trademark for non-use.
  • If the parties themselves so request, in which case the suspension may not exceed 6 months.

- The appeal procedure

The decisions of the French Office in examination proceedings, as well as in opposition proceedings, may be challenged before the competent Court of Appeal within a period of 3 months (for foreigners) from the date of notification of the decision.

The Court of Appeal passes judgment on issues of fact and law. New evidence may be produced during the appeal procedure. In the event of an appeal against an opposition decision, it is possible to join the appeal proceedings and any other court proceedings brought against the validity of the earlier trademark.

The decision of the Court of Appeal may be the subject of a further appeal to the "Court of Cassation" (Supreme Court), but only in cases where there has been an improper application of the law by the lower court.

PROCEDURE REGARDING THE CTM

- Examination

Community Trade Mark applications may be refused on the basis of absolute grounds of refusal:

  • trademarks that are devoid of distinctive character;
  • trademarks consisting exclusively of signs or indications that serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
  • signs or indications that have become customary in trade;
  • three-dimensional shape marks that result from the nature of the goods, are necessary to obtain a technical result or give substantial value to the goods;
  • trademarks that are contrary to public policy or principles of morality;
  • deceptive trademarks, in particular as to the nature, quality or geographical origin of the goods or services;
  • trademarks that include badges, emblems or escutcheons other than those covered by Article 6ter of the Paris Convention for the Protection of Industrial Property and that are of particular public interest, unless the necessary consents have been granted; and
  • geographical indications for wines or spirits that do not have such origin.

The CTM application is rejected even if one of these grounds exists only in one EU Member State.

Evidence of prior use is not required when filing the application. However, a sign that would be refused protection for lack of distinctive character may become eligible for registration if the applicant can prove distinctiveness acquired through use. In this regard, the applicant must establish that the mark has been used throughout the whole or a substantial part of the EU, in such a way that a sufficiently large part of the relevant public would recognize the sign as a distinctive mark at the time the Community trademark application is filed.

Once the Community trademark application is accepted for registration and the registration fee has been paid, the Community trademark is registered. The registration procedure generally takes about 18 months from the date of filing, if there are no objections or oppositions.

- Opposition procedure

No substantive examination exists by which the OHIM identifies any prior rights that would conflict with the registration of the requested Community trade mark. Prior rights may only be asserted by their owners in the context of an opposition procedure.

Upon publication of a Community trademark application, a prior right holder has three months to file an opposition. The opposition must be in writing and must cite the grounds on which it is based. However, a simplified formal opposition can be filed, and the opponent is given a deadline to complete its arguments and provide supporting documentation.

The opposition is transmitted to the applicant prior to any examination of its admissibility. Once the OHIM deems the opposition admissible, the applicant and the opponent are notified of the start of a two-month ‘cooling-off’ period, during which the parties may attempt to negotiate a settlement. If jointly requested by the parties to the opposition procedure, the cooling-off period may be extended by the OHIM up to 24 months. Either party may unilaterally opt out of the cooling-off period at any time by informing the OHIM, in which case the adversarial part of the opposition immediately commences.

An opposition may be based on four principal relative grounds:

(1) The first opposition ground is ownership of an identical or similar prior trademark registered for identical or similar goods or services (Articles 8(1)(a) and (b)). These include:

  • Community trademark registrations or applications (subject to registration);
  • national trademark registrations or applications (subject to registration) in an EU Member State;
  • international trademark registrations that have effect in an EU member state; and
  • trademarks that are well known in a Member State in the sense of Article 6bis of the Paris Convention.

An opposition filed on the basis of Article 8(1)(b) must demonstrate that there is a likelihood of confusion between the two marks. Such likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case, including:

  • the similarity between the signs;
  • the similarity between the goods and services;
  • the relevant territory;
  • prior coexistence of the two marks; and
  • the target consumer groups.

(2) The second opposition ground is the existence of an earlier trademark with reputation that may designate different goods or services (Article 8(5)) from the subsequent Community trademark application.

In order for the opposition to succeed, the following conditions must be satisfied:

  • the marks in question are identical or similar;
  • the prior mark had a reputation in the European Union (in the case of a Community trademark), or the territory in which it is protected (in the case of a national or international mark), as of the date of the contested Community trademark application;
  • the use of the later mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the prior trademark; and
  • the applicant is using the contested mark without due cause.

(3) The third opposition ground is ownership of a non-registered trademark or other sign used in the course of trade of more than mere local significance if, pursuant to the law of the member state governing the sign, it entitles its owner to prohibit the use of a subsequent trademark (Article 8(4)).

(4) The fourth opposition ground is based on a situation where a Community trademark application has been filed by the agent or representative of a trademark owner without its consent (Article 8(3)).

The same opposition may be brought on the basis of one or more of these relative grounds, and may cite several prior rights – for example, several prior trademarks in the case of an opposition brought on the basis of Article 8(1)(a) – as long as the opponent owns or is the exclusive licensee all of these prior rights.

If the mark upon which the opposition is based has been registered for more than five years as of the contested Community trademark application’s publication date, the applicant may request proof of the genuine use of the prior mark. Such request must be filed within the OHIM deadline for the applicant’s response to the opposition. If no proof is submitted, or the OHIM considers the proof inadequate, the opposition is automatically rejected.

The losing party in the opposition procedure must normally bear all the costs of the winning party within limits that are established by the Office. A different cost allotment may be imposed by the OHIM according to equity.

In practice, opposition proceedings are often resolved by an amicable agreement between the parties. In this respect, according to OHIM statistics, more than 75 % of the oppositions filed are settled amicably. Indeed, as oppositions may be based on prior rights in any of the EU Member states, each party often has prior rights in certain countries. Therefore, a coexistence agreement can be concluded such that both parties may register their marks as Community trademarks for the specific goods or services in which they are interested.

If the registration of an application is refused, the applicant has a three-month window to opt to convert the Community trademark application into national applications in any EU member state it wishes, other than those in which the opponent has prior rights. Such national applications benefit from the original filing date of the Community trademark application.

In addition to the opposition procedure, any interested party is also able to submit written observations relating to any absolute ground for refusal during the procedure before the Office. However, relative grounds for refusal can only be raised during an opposition procedure.

- Appeal procedure

Either party may appeal the Opposition Division decision to the OHIM Board of Appeal. Subsequently any questions of law can be appealed to the ECJ which has jurisdiction only to annul or alter the contested decision, but which cannot rule on the merits of a claim that the OHIM has not already considered.