This is the formality by which a natural or legal person files an application for registration of a trademark with an intellectual property office, namely the INPI for French trademarks, the EUIPO for European Union trademarks or the WIPO for registered trademarks through the Madrid System.
The act of filing is undoubtedly the most important step in the life of a trademark.
It is therefore highly recommended to be assisted by a professional specialized in intellectual property (lawyer or counsel) in this process.
Indeed, although the formalities of trademark registration are relatively accessible to all thanks to online forms made available by the main trademark offices, it is nonetheless imperative to take into account numerous elements in order to avoid errors and omissions that could lead to irreversible consequences.
Prior to filing, it is necessary to ensure that the proposed sign meets the conditions of eligibility for protection under trademark law, namely
- Distinctive character: the sign must be capable of fulfilling the essential function of the trademark, i.e. indicating the commercial origin of the good(s) and/or service(s) and distinguishing them from those of its competitors(companies or individuals).
Thus, a sign that is purely descriptive of a characteristic of the good(s) and/or service(s) in question (nature, quality, origin, etc.) is not suitable for use as a trademark.
Similarly, a sign consisting exclusively of the shape or other essential characteristic of the product is also not suitable for constituting a trademark.
- Lawfulness: a trademark must not be of such a nature as to offend public order or morality, nor must it consist exclusively of an element whose appropriation as a trademark is expressly prohibited by law, such as flags and emblems of States or international organizations.
- The absence of deceptive character: a sign of such a nature as to deceive the public cannot constitute a valid trademark.
For example, a trademark that contains the word “Bio” and the French flag to designate products that are neither made in France nor organically grown, could be considered misleading and not eligible for trademark protection.
- Availability: Finally, the registered trademark must not infringe on the prior rights of third parties.
It is therefore strongly recommended that prior to filing a trademark application, a prior art search be conducted in order to identify the prior rights of third parties that could potentially be infringed by the proposed application and to determine the extent to which the proposed trademark is available.
Once these preliminary verifications have been carried out, within the framework of the registration process, it is necessary to determine the sign that will be the subject of the registration (word mark, semi-figurative mark, logo, etc.) and to identify precisely the wording of the good(s) and/or service(s) that will be covered.
This step is fundamental, especially insofar as, once the filing is made, it is no longer possible to modify the trademark application to alter the sign or to complete the wording of the classes of good(s) and/or service(s).
However, an incomplete filing or one that does not correspond to the version of the The use of a trademark that will actually be used can have disastrous consequences for the trademark owner who may not be able to enforce his trademark against third parties who use identical or similar signs for the same activities (in particular in the context of a lapse action for lack of genuine use).
Furthermore, it is also possible, at the time of filing, to claim the priority of an earlier filing, if applicable. For this purpose, the prior filing whose priority is claimed must be precisely identified.
Finally, once the trademark has been filed, various steps are still involved before the trademark is registered :
- The competent Office shall conduct an examination of the trademark application.
This examination may lead the Office to issue notifications of irregularities inviting the applicant to regularize his filing, or to issue a provisional refusal based on absolute grounds for refusal.
It is highly recommended to be assisted by a professional specialized in intellectual property to handle these notifications (lawyer or counsel).
- Once the Office’s examination is completed, the trademark application is published in the Official Bulletin (BOPI), which opens an opposition period during which third party holders of prior rights may oppose the registration of the trademark.
The opposition period is two months from the date of publication for French trademark applications and three months from the date of publication for European Union trademark applications.
For French and European Union trademark applications, this same period also opens the possibility for third parties who are not holders of prior rights to file observations against the registration based on absolute grounds for refusal.
Provided that the trademark application is not the subject of an objection by the competent Office or an opposition, it will be registered by the Office.
Moreover, once the trademark is registered, its owner must use it for all the good(s) and/or service(s) it designates. that it designates, at the risk of having an action for revocation brought against the trademark at the earliest 5 years after registration.
Thus, any third party can request the cancellation of a trademark registration for lack of use.
If the owner is not able to prove the use of his trademark for all the good(s) and/or service(s) referred to in the application, the trademark will be cancelled.
Under these conditions, in order to maintain its rights on a trademark, it must be effectively exploited by its owner.
Update on French Polynesia
The French trademark does not automatically cover the territory of French Polynesia.
Nevertheless, it is possible to designate this territory simultaneously with the trademark registration made at the INPI for an additional official fee of 60 euros.
Point on the different types of trademarks
The Ordinance transposing Directive (EU) No. 2015-2436 of December 2019 (included in the “Trademark Package”), notably removed the graphic representation requirement that limited the filing to word, figurative and semi-figurative trademarks.
From now on, non-traditional trademarks such as sound trademarks, movement trademarks or holograms can also be protected under trademark law.
Update on the priority right
From the date of the first trademark filing, the owner has a period of 6 months to extend his trademark to other territories by claiming priority from his initial filing.
This legal mechanism allows the date of subsequent filings to be dated after the first one, thus preserving its anteriority.
Filing a trademark under priority allows the owner to proceed in stages: he first ensures that his trademark is registered in the first strategic country, before filing it in other countries under priority.
Update on figurative and semi-figurative trademarks
The figurative elements are also likely to be creations that can be protected under copyright (provided that the condition of originality of the work is met).
If this is the case (the trademark to be registered contains, for example, a logo created by a third party at the request of a company), the applicant must ensure that the author has formally assigned his rights over his creation (via an assignment contract), preferably before proceeding with the trademark registration.
The Bouchara firm assists you in particular in :
- Prior art searches prior to trademark application;
- The strategy of trademark application, namely the determination of the sign, the analysis of its distinctiveness, the drafting of the wording of the good(s) and/or service(s) subject to registration, as well as the designation of the territories targeted by the registration;
- The preparation and filing of the application(s) for trademark registration with the competent offices in France and abroad;
- Monitoring the registration process;
- Analysis and processing of official notifications issued by the Office or third party objections, if any;
- Once the trademark is registered, the transmission of the Certificate of Registration ;
- The management of the trademark during its entire period of protection (renewal of the registration at its expiry, registration of all changes that would affect the ownership or the scope of the trademark etc.);
- Protection and defense of your trademarks (opposition proceedings, nullity action, infringement action , etc.).