Refusal of registration or notification of irregularities

When a registration of an intellectual property right has been made, it does not necessarily mean that the subject matter of the registration will be protected, as the Intellectual Property Office may decide to refuse the registration or issue a notice of irregularity.

A application, for example, must be drafted with the utmost rigor, meet the conditions of validity of the trademarks such as the distinctiveness, lawfulness, non-deceptiveness as well as the availability of the sign, although this last condition is not examined by the Trademark Office at the time of filing.

This deposit must also comply with formal requirements, such as identification of the depositor, representation of the trademark and the designation of the product(s) and/or service(s) covered by the trademark application by a wording that must be sufficiently precise, to cover the entire activity, without being too circumscribed or conversely too extravagant, at the risk of then having to limit the scope of protection of the trademark, and the indication of the classes.

In France, once the application has been filed and received by the National Institute of Industrial Property(INPI), the Office proceeds with the examination of the application, which covers both the substantive and formal conditions.

During this examination, theINPI can send the applicant a notification of irregularities when it considers that the trademark application must be modified in order to be registered.

In practice, theINPI sends a registered letter with acknowledgement of receipt containing a statement of irregularities and indicating a deadline for response.

These irregularities may be substantive, i.e. there is a defect in the conditions of validity of the trademark, including:

• The sign is devoid of distinctive character;
• The sign is contrary to public policy.

But these irregularities can also be material, i.e. they concern the form of the deposit:

• The depositor is misidentified or not identified;
• The depositor’s address is incomplete, inaccurate or missing;
• The deposit is not signed;
• The deposit requires a proxy, which is missing;
• The description of the trademark is wrong;
• The wording of the product(s) and/or service(s ) is not correctly drafted (INPI regularly refuses imprecise wording, especially those that refer to class titles, or “heads of classes”).

If the applicant fails to fully rectify the deficiencies within the time limit, theINPI will issue a decision to refuse the registration of the trademark application in whole or in part, depending on the deficiencies that have been identified and those that have been rectified.

However, it is always possible to contest a decision of refusal of registration rendered by the Director General of theINPI under Article L.411-4 of the Intellectual Property Code.

The applicant must then appeal to the competent Court of Appeal within one month of the date of notification of the Office’s decision.

The protection of a sign distinctive under trademark law is necessarily acquired through its filing with an Intellectual Property Office, whose analysis of the formal and substantive conditions may vary according to the country designated (note that French law remains very similar to European Union law, for the sake of harmonization)

Therefore, it is recommended that you seek the assistance of a specialized lawyer who will assist you with the prior art search prior to filing a trademark application, with the filing formalities and with the follow-up of the registration procedure of your trademark.

For trademarks and designs, the registration procedure can take about 6 months before the INPI for French applications and about 3 months before the EUIPO for European Union applications (in the absence of opposition (e.g., third party or official notification from the Office), intellectual property rights are acquired from the date of filing and not from the issuance of the Certificate of Registration.

Point on the wording of the products and/or services of the trademark

It is important for the applicant, at the stage of filing the trademark, to consider the possible evolutions and extensions of his trademark in the medium and long term.

Indeed, the products and/or services not designated in the application cannot be protected by the trademark and will require a new application.

Update on Lapse

A trademark that has been registered for more than 5 years may be subject to a revocation action if it has not been effectively used for all the goods and/or services for which it is registered.

Indeed, the owner of a trademark is obliged to use the registered sign for all of the products and/or services covered by the registration, at the risk of being subject to a revocation action for lack of use.

The exploitation retained in this context will be that of the sign as filed with the Office. An exploitation of the trademark in a modified form will not allow the owner to prove the use of his registration.

It is therefore important to ensure that the trademark is used for all the products and/or services it identifies and to gather evidence of use of the trademark, failing which the registration will be totally or partially cancelled.

Update on sign availability

Please note that unlike other countries (notably China), in France, the INPI does not examine the availability of trademarks during the examination of applications. This criterion must be verified by the applicant by performing a prior art search.

The Bouchara firm assists you in particular in :

• Analysis of the distinctive character of your trademarks;
• The strategy and procedure for filing your intellectual property titles with the Offices (INPI for French trademarks, EUIPO for European Union trademarks, etc.);
• The conduct of anteriority searches prior to the filing of a trademark (analysis of the legal and practical risk of reaction from third parties against your filing and/or the use of your trademark) ;
• The writing of product(s) and/or service(s) labels of your trademarks;
• The response to a registration refusal or official notification if applicable;
• Preparation of proof of use of your trademark;
• Protection and defense of your intellectual property rights, in France and abroad (opposition proceedings, nullity action, seizure for infringement, action for unfair competition, etc.).