Validity conditions, procedure for registration and enforcement
10 December 2019: Trademark reform package implemented in France - Adoption of one fee per class system
Any distinctive sign may be registered as a trademark.
A trademark is a sign capable of being represented graphically and serving to distinguish the goods or services of a company.
- A trademark can consist of a word or a combination of words that are fanciful (such as KODAK, MERCEDES) or evocative of the goods or services that they identify.
- Advertising slogans may also be protected as trademarks
- A family name can constitute a valid trademark : FORD for cars, DIOR for clothing and perfumery, LOUIS VUITTON for luggages and bags.
- A geographical name may constitute a trademark provided that it is not the name of a place that has a particular reputation, or an appellation of origin or indication of provenance.
- Single letters or digits and longer numbers may be valid trademarks.
- The following have been recognized as valid:
- SVP for an information service
- N°5 for perfumes
- 4711 for Eau de Cologne
- A trademark may consist of a figurative sign, logo or pattern, which may or may not be associated with a name.
- A label affixed to a packaging may be protected as a trademark.
- Holograms and computer generated images may also be protected as trademarks.
- Colour combinations such as the yellow and red for KODAK film may be protected as a trademark.
- Particular shades of colours may also be protected, such as the colour "purple" for chocolate.
- A trademark may consist of "the characteristic shape of products and their packaging"- it is a tri-dimensional mark - provided that the shape is arbitrary (the CONTREX bottle was registered as trademark for mineral waters).
- Such a trademark can however only be protected if its shape results from the nature or function of the goods themselves or that the shape gives its substantial value to the goods.
- An acoustic sign, such as a sound or a musical phrase, may be protected as a trademark, if it is capable of being represented graphically.
THE CONDITIONS FOR THE VALIDITY OF A TRADEMARK
To be considered as a valid trademark, the proposed sign must be distinctive, have a lawful character and be available.
Is distinctive the sign which is capable of distinguishing particular goods or services from other similar goods or services.
Distinctive character is assessed in relation to the goods or services claimed or similar to those claimed in the application.
Are devoid of distinctive character signs or names which, in everyday or professional parlance, consist exclusively of the necessary, generic or customary name of the goods or services.
The generic nature of the trademark is assessed as of the date of its filing in France. Thus, the trademark FUN for windsurf boards was held to be valid, as the word was not considered to be generic in France for such goods as of the application date.
Are devoid of distinctive character signs or names that may serve to designate a feature of the goods or services, and in particular the kind, quality, intended purpose, value, geographical origin or time of production of the goods or rendering of the service.
Are devoid of distinctive character signs which consist exclusively of the shape of the product which results from the nature or function of the goods themselves, or which gives substantial value to the goods.
For example, a simple rectangular box may not be subject of a tri-dimensional trademark.
Distinctive character may also be acquired through use. Trademarks that are otherwise descriptive may thus become valid as a result of their extensive use.
To have a lawful character, a trademark must not be contrary to "l’ordre public" or to accepted principles of morality and must not make use of governmental or official emblems. Thus, a national flag cannot be adopted as a trademark.
Are also forbidden deceptive trademarks of such a nature as to deceive the public, for example as to the nature, quality or geographical origin of the goods or services.
To constitute a valid trademark, a sign must be available.
In order to know whether a sign is eligible for use as a trademark, it is necessary to establish that it has not already been used as a trademark for the same or similar goods or services, and that it does not conflict with any other earlier intellectual property rights.
A- The existence of an earlier trademark
- The earlier registered trademark
A sign is available pursuant to French law if it has not already been registered as a trademark for the same or similar goods. There must not be likelihood of confusion between the marks and the part of the public.
- The earlier well-known trademark
This refers to trademarks that are very well-known to the public in a particular sector or have even acquired a more or less universal reputation, an example being COCA COLA for non-alcoholic drinks.
B- The existence of other prior rights
- A Registered Company name, a Trade name, a Company sign
These signs constitute prior rights if there is a likelihood of confusion on the part of the public. A trade name or company sign must also be known throughout the national territory.
- A Registered appellation of origin
An appellation of origin may not be used for any similar goods, or for any other goods or services, if such use is capable of weakening the reputation of the appellation. Thus, the trademark CHAMPAGNE was declared invalid for cigarettes and perfumes.
- A Copyright or registered design
A copyright grants to the author of a work an exclusive right to such work that may be asserted against any third parties. It is thus prohibited to use a sign protected by a copyright, or by a design registration as a trademark without the authorization of the author or owner of the registration respectively.
- Personal rights in particular, family name, pseudonym, image
The family name is protected as an element of personality.
The American actor STALLONE was able to have a trademark STALONE for clothing declared invalid because of the risk of confusion with his name.
In the event of identical names, or between members of the same family, a third party acting in good faith may nevertheless use his name as a company name, trade name or company sign even if it has already been registered as a trademark, so long as that such use does not infringe rights in the trademark (taking unfair advantage of the reputation, likelihood of confusion etc..).
Thus, it was held that a Miss Carol Revillon, a fashion designer specialized in creating ready-to-wear clothing for women, was able to set up a company named CAROL REVILLON DISTRIBUTION notwithstanding the trademark REVILLON registered by the Revillon company to designate, in particular clothing. It was held that Carol Revillon, a person of the same name, was herself running the business identified by her name. Furthermore, she was not creating any confusion on the part of her customers as to the origin of the clothing sold.
- The name, image or reputation of a territory
This includes names relating to municipal, departmental, region and other entities.
TRADEMARK REGISTRATION PROCEDURE
In France, trademark rights can only be obtained through its filing and subsequent registration. The effects of registration take effect as of the date of filing.
a) The examination procedure
Applications to register trademarks are examined as to form and substance by the French Industrial Property Office. The substantive examination relates entirely 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 filing documents are in order (they must include, inter alias a list of the goods or services to which the trademark applies) the application to register the trademark 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 Official Journal of Industrial Property (BOPI).
b) 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.
c) 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 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 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.
When the applicant for the contested trademark needs registration of his trademark in order to extend its protection abroad (for example by filing an international trademark application under the terms of the Madrid Arrangement) registration is ordered notwithstanding opposition. The registration may then be revoked if the opposition is found to be valid in whole or in part.
d) 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 1 month (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.
THE TRADEMARK AFTER REGISTRATION
The registered trademark must be renewed every ten years.
Period of protection of the trademark and renewal procedure
The period of registration is ten years, starting with the filing.
The trademark can be renewed every ten years on payment of a renewal fee, so long as the renewal does not entail any amendment to the sign or any extension of the list of goods or services. The list of goods or services may however be restricted in connection with the renewal of a trademark.
In order to be valid, renewal must be requested before the previous registration expires, or in a 6 months grace period, otherwise the trademark will be considered abandoned.
Renewal does not entail any further examination of the validity of the trademark and does not trigger a new opposition procedure.
The new ten-year duration of the renewed trademark begins to run as of the end of the previous ten-year period.
If the sign has to be amended or if the list of goods or services has to be extended, the owner of the trademark must file a new application, though this may make reference to the previous registration. This new application benefits from the rights acquired from the earlier registration in respect of elements "common" to both, both as regards the trademark itself and the list of goods and services if the new application is filed while the previous registration is still in force.
The effects of the earlier trademark cease once the new application has been registered. Only the new elements of the application may be the subject of examination by the Office or of observations or oppositions by third parties.
Amendments and transfer
These may be simple changes in the name or address of the owner of the trademark, or assignments, licenses or any other change affecting the mark in whole or in part.
Such changes shall have effect towards third parties only if they have been registered in the National Register of Trademarks, kept by the French Industrial Property Office and these changes must , for transfer of ownership, be recorded before renewal.
DECLARATION OF INVALIDITY
Two sorts of invalidity actions can cause the cancellation of the trademark.
When a trademark is registered, it is presumed to be valid. However, if it fails to comply with the statutory conditions for validity, an action may be brought in court to declare it invalid.
There are two kinds of invalidity: absolute invalidity and relative invalidity.
An action for absolute invalidity may be brought by any interested party, including the public prosecutor. Invalidity of a trademark is considered absolute if the sign is incapable of constituting a valid trademark i.e.:
- impossibility of graphic representation
- absence of distinctive character
- unlawful signs.
By contrast, relative invalidity of the trademark results from the existence of earlier rights i.e., trademark, company name, family name, copyright. An action may only be brought by the owner of such earlier rights.
In all cases, the decision to declare the trademark invalid has an absolute effect in France and must be registered at the National Registry of Trademarks. Such a decision may be relied upon by third parties who may cite it as a defence.
A declaration of invalidity may be only partial i.e., the trademark is invalid for some goods or services but remains valid for others.
An action for invalidity brought by the owner of an earlier trademark is not admissible if the subsequent trademark was applied for in good faith and if the owner of the earlier mark tolerated the use of the subsequent mark for five years. For this reason, it is important for a trademark owner to watch publication of trademark applications, because this gives him the ability to act immediately, either through the opposition procedure or by bringing an action for invalidity, thus avoiding any risk of inadmissibility of an action.
REVOCATION OF THE TRADEMARK
The registered trademark may be invalidated through non-use or dilution.
A registered trademark may be revoked if the use made of it fails to comply with certain conditions.
a) Revocation for non-use
A trademark that has not been used for a period of five years may be revoked.
Revocation is not automatic; an action must be brought before the courts.
In order to defeat a revocation action, the owner of the trademark must prove either that he had a legitimate reason for failing to use his mark or that he has indeed made serious use of his trademark. He may prove use of his trademark by any means available.
Any interested party may bring an action for the revocation of a trademark if he has become convinced that the mark in question has not been used for a period of five years.
Before filing suit, the interested party generally sends a registered letter with acknowledgement of receipt to the owner of the trademark, asking him to assign him the trademark or, alternatively, to give his consent to free use. Any use of the trademark in the three-month period following receipt of the letter will not be accepted as proof of the genuine use of the mark.
Thus, if the owner does not agree to assign the mark or grant free use, the interested party has a period of three months within which to bring a revocation action before the competent court.
Revocation for non-use takes effect on the expiry date of the five-year period during which the trademark was not used, and not on the date of judgment.
Revocation for non-use may also be validly raised as a defence to an infringement suit.
b) Revocation for dilution
The owner of a trademark which, as a result of his action, has become the customary name in trade for the goods or services designated may also be revoked.
Trademark owners must therefore carefully survey the way in which their trademarks are used by the public and themselves in order to avoid the risk of this kind of dilution.
Thus, the owner of a trademark should refrain from using his trademark as a common name in his own literature. In the absence of a common name, he will have to create one.
The acts constitutive of infringement are listed precisely and the court action used to have the infringing acts qualified follows very specific rules, including in the means to constitute evidences, such as the seizure.
a) Acts of infringement
Any act that damages the rights deriving from a trademark constitutes a form of infringement. There are three types of infringement:
- The trademark is reproduced, used with or affixed to goods or services identical to those listed in the registration.
- The trademark is reproduced in connection with goods or services similar to those claimed in the registration, and there must is a likelihood of confusion on the part of the public.
- The trademark is not reproduced but rather imitated in connection with goods identical with or similar to those claimed in the registration, and there is a likelihood of confusion on the part of the public.
b) Assessment of the infringing act
In order to assess the infringing act, one must focus upon the similarities between the trademarks. In addition, care must be taken to examine each mark individually, with reasonable attentiveness, putting oneself in the position of the consumer who sees the goods sold under the conflicting trademarks not simultaneously but at different times, and whose attention is caught by the overall appearance of the trademark.
c) The infringement procedure
Infringement may be proved by any appropriate means. The infringement seizure procedure provided by the law is the most commonly used.
There are two types of seizures: infringement seizure and customs seizure.
- Infringement seizure
The owner of the trademark or his exclusive licensee files an application with the President of the competent court in the jurisdiction where the infringement seizure is to be carried out. After having proved that the registered trademark exists and that he is the owner, the President will issue an order authorizing the infringement seizure at a specified location.
The seizure may simply be descriptive or may involve the effective seizure of goods, generally samples. In the case of a purely descriptive seizure, a mere description of the allegedly infringed articles is produced. Otherwise, samples of the allegedly infringed articles are also seized to furnish proof of the infringement. In this latter case, the court may require provision of a security prior to the seizure.
In order to validate either type of seizure, the applicant must summon the alleged infringer before either the civil or the criminal Court within a period of fifteen days. If he fails to do so, the seizure of goods or samples will be automatically void.
- Customs seizure
Upon a declaration by the owner of the trademark to the customs authority, said authority exercises its powers of inspection and seizes the goods on which the allegedly infringing trademark appears. This, unlike the infringement seizure, is a seizure that extends to the entire stock of infringing products at the custom.
The customs authority then informs the trademark owner of the names and addresses of the shippers, importers and consignees of the seized goods.
The applicant is allowed a period of ten days to bring proceedings before the courts.
If he fails to comply with this deadline, the seizure is automatically lifted.
d) Penalties for infringement
Any infringement of a trademark is liable for civil damages. In addition, trademark infringement also constitutes a criminal act that may be punished under the Criminal Code.
Depending on the particular case, it may be in the interests of the trademark owner to institute proceedings before the criminal court rather than the civil court.
- Civil liability
An infringement suit is brought before the court pursuant to the civil law rules on jurisdiction. The statute of limitation is of three years. The proceedings are instituted by the trademark owner. An exclusive licensee, however, also has the right to sue in place of the trademark owner if the latter, having previously been advised to bring action, does not exercise his right to do so, and in the absence of any provision to the contrary in the license agreement.
Decisions finding the defendant guilty of infringement may be issued only if the trademark is registered. The law allows the applicant however, to bring proceedings against an infringer even before publication of the application for registration, by serving upon him an official copy of that application.
The trademark owner - or, under the conditions stated above, his exclusive licensee - may seek an order in summary proceedings:
- either a preliminary injunction, subject to penalty, requiring the defendant to immediately cease all acts of infringement. The court may require a security to be paid by the plaintiff in order to compensate the defendant if the infringement action subsequently proves unfounded
- or an order requiring the alleged infringer to provide a security intended to compensate the owner of the trademark during the continuation of the acts of infringement and in the event that the infringement is subsequently upheld.
In its decision on the merits, the court may prohibit the infringing activities, and order the defendant to pay damages to the trademark owner for the prejudice suffered as a result of the infringement.
The court may also order display and publication of the judgment and confiscation of the goods and tools used to make the infringement.
- Criminal liability
As in civil proceedings, an action may be brought by the trademark owner or by his exclusive licensee. Public proceedings are initiated either by the public prosecutor or by the victim.
A distinction has to be made between two types of offences:
- direct infringement, where the perpetrator need not be acting in bad faith. This offence is committed if a trademark has been reproduced, imitated, used, affixed, removed or modified;
- indirect infringement, where the perpetrator must be acting in bad faith. This offence is committed if there was culpable intent and if goods or services were possessed, sold, supplied or delivered under the counterfeit trademark.
These offences are punished by a term of imprisonment of 4 years and a fine of 400 000 euros (which can reach 5 years of prison and a fine of 500 000 euros in case of acts committed in association).
EXHAUSTION OF RIGHTS
There exist a limit to the right of the trademark owner to forbid the use of its registration, and this in order to avoid that the owner may attempt to the principle of free movement of goods.
The French law embodies the principle of exhaustion of trademark rights derived from Community case law. The holder of the trademark right cannot prohibit the free movement of goods under a trademark after they are placed on the market in any of the Member States of the European Union by the owner or with his consent.
However, the trademark owner may oppose further commercialization of the goods if the goods have been altered, modified, repackaged, etc.
The grounds alleged must be legitimate.
TRADEMARK ASSIGNMENTS AND LICENSES
A trademark constitutes an asset and can therefore be transferred (totally or partially) or given in licence.
a) Trademark assignments
Trademarks may be assigned in whole or in part. The assignment, however, may not be limited geographically. It must be valid throughout the extent of the French territory.
The trademark may be assigned together with a business or may be the subject of assignment independent of the business.
The assignment must be in writing in order to be valid.
In order to have effect towards third parties, the assignment must be registered in the National Register of Trademarks maintained by the French Trademark Office.
b) Trademark licenses
Trademarks may be, in whole or in part, the subject of a license to use.
The license may be exclusive or non exclusive.
Unlike for an assignment, a license may be geographically limited.
In practice, a written agreement is necessary: firstly to constitute proof of the license and secondly in order for the license to be registered in the National Register of Trademarks, which is essential in order for the granting of the license to have effect towards third parties.
Further, registration of the license allows the exclusive licensee not only to join with the trademark owner in seeking compensation for damage caused to him personally in the event of infringement, but also to sue for infringement in place of the trademark owner, assuming that there are no contrary provisions in the license agreement and that the licensee has previously advised the trademark owner of his intention to file suit.
COLLECTIVE TRADEMARKS IN FRANCE
Some trademarks, called collective, are meant to be used only by groups of persons and follow particular rules.
This term is used to describe two categories of trademarks that are intended to be used by members of an association: the collective trademark as such and the collective trademark of certification.
a) The collective trademark as such
Its use is governed by a set of rules established by the owner of the registration and filed at the French Trademark Office at the same time as the trademark application.
Collective trademarks are used similarly to individual trademarks, the only difference being that they may be used by any person who has ratified the set of rules established by the owner of the registration, who may be either a natural person or a legal person itself entitled to make use of the trademark.
The collective trademark as such is thus similar to an individual trademark that has been granted under license to a plurality of users forming a network. The owner of the individual trademark, however, is free to refuse to grant a license, whereas the owner of a collective trademark may not prohibit the use of the trademark by any user who complies with the rules of use.
b) The collective certification trademark
This is a trademark whose purpose is to offer the public certain guarantees relating to the nature, ownership and quality of the goods or services identified by the trademark.
Required qualities are set forth in the rules determining the conditions under which the trademark of certification may be used.
Use of the collective certification trademark is free to any person who complies with the conditions laid down in the rules.
A collective certification trademark may be filed only by a public or private legal person. Further, this entity may not be the manufacturer, importer or seller of the goods or services listed in the trademark application. Finally, the owner of the trademark may not himself use it.