Methods of acquiring trademark rights

PART I: ACQUISITION OF TRADEMARK RIGHTS IN FRANCE

PART 2: ACQUISITION OF THE COMMUNITY TRADEMARK

PART 3: INTERNATIONAL REGISTRATION OF TRADEMARKS

PART 4: TRADEMARK REGISTRATION ABROAD: THE CASE OF THE UNITED STATES

PART I: ACQUISITION OF TRADEMARK RIGHTS IN FRANCE

APPLICATION FOR REGISTRATION IN FRANCE

WHO CAN FILE A TRADEMARK ?

The application for registration of a trademark may be filed by any natural or legal person.

The FILINGmay be made by the applicant personally or by an agent.

When the applicant is neither established nor domiciled in France or in a Member State of the European Union or the European Economic Area, the assistance of an agent is mandatory.

In accordance with Article L.712-11 of the Intellectual Property Code, if the applicant is neither domiciled nor established on French territory and is not a national of a member state of the World Trade Organization (WTO) or of the Paris Union, he must provide the National Institute of Industrial Property with evidence that his country provides protection to trademarks.

A trademark can also be registered in the name of one or more persons, natural or legal.

The appointment of an agent is mandatory when the trademark is registered in the name of several persons.

THE FORMALISM OF THE TRADEMARK REGISTRATION

The application for registration of the trademark is filed with the National Institute of Industrial Property (INPI).

According to article L.712-2 of the Intellectual Property Code:

“The application for registration shall be submitted and published in the form and under the conditions laid down in this Title and specified by decree in Council of State. It shall include, in particular, the design of the trademark and a list of the goods or services to which it applies.”

Article R.712-3 of the same code specifies that the registration includes :

The application for registration of the trademark specifying in particular:

• Identification of the applicant;
• The model of the trademark, consisting of the graphic representation of the latter. The template can also be completed with a brief description. This description is limited to a statement of the characteristics of the trademark that may affect the scope of protection;
• The list of goods or services to which it applies, as well as the list of corresponding classes;
• If applicable, the indication that the right of priority attached to a previous foreign filing is claimed.

The following documents must be attached to the registration application:

• Proof of payment of prescribed fees;
• If an agent is appointed, the power of attorney of the latter, unless he is an industrial property attorney or a lawyer;
• If the distinctive character of the sign registered as a trademark has been acquired through use, the justification of such use ;
• In the case of a collective certification trademark, the regulations determining the conditions to which the use of the trademark is subject;
• If the applicant is a foreigner who is neither domiciled nor established on the national territory, and subject to international conventions, proof that he or she has duly filed the trademark in the country of his or her domicile or establishment and that this country grants reciprocal protection to French trademarks.

Contrary to the registration of designs, a single registration can only relate to one trademark.

The filing date taken into account by the INPI is the date of receipt of the application by the INPI, whether it is sent by mail, filed on paper at the Office or filed electronically, except in the case of the exercise of a priority right.

Upon receipt of the application form, INPI acknowledges receipt to the applicant.

EXAMINATION OF THE APPLICATION FOR REGISTRATION

Unless the application is declared inadmissible due to the lack of the information provided for in Article R.712-3 above, the trademark application shall be published in the Official Industrial Property Bulletin (BOPI) within six weeks of filing.

The purpose of this publication is to inform third parties of the application for registration so that they can comment on or oppose the registration of the mark.

At the same time, the Office proceeds with the examination of the application.

REVIEW OF THE APPLICATION BY THE BOARD

All trademark registrationis subject to verification by the INPI which will first ensure that the application for registration and the documents annexed thereto comply with the requirements of the laws and regulations in force, and on the other hand, that the sign filed may constitute a brand by application of articles L.711-1 and L.711-2 of the Intellectual Property Code and be adopted as a trademark by application of article L.711-3. 

Consequently, the INPI does not have the role of searching if the sign is available.

In the event of a non-compliant application, a notification is sent to the applicant who then has a period of time in order to rectify his application. This notification from the INPI is generally accompanied by a proposal for regularization which will be deemed accepted if the applicant does not contest it.

In the absence of any regularization or observation allowing the objection to be removed, the application for registration is rejected, either in full or in part.

COMMENTS FROM THIRD PARTIES

Article L.712-3 of the Intellectual Property Code provides that:

“During the two-month period following publication of the application for registration, any interested person may submit observations to the Director of the National Institute of Industrial Property.”

These observations are made in particular by persons with prior rights who do not have access to the opposition procedure because of the nature of their rights.

It is indeed the operators of commercial names, corporate names, signs or holders of domain names.

The observation allows to draw the attention of the INPI to the fact that the trademark would not be valid.

In case of observation, the applicant is notified by INPI.

OPPOSITION TO THE REGISTRATION OF THE TRADEMARK

The opposition procedure is open to the owner of an earlier trademark and allows him to oppose the registration of a trademark if he believes that it infringes his rights.

Who can object?

Opposition is reserved only for owners of prior French or Community trademarks, well-known trademarks used for identical or similar services, or prior trademarks with a right of priority.

Owners of simple applications for registration of a French or Community trademark may also file an opposition. Exclusive licensees may also file an objection if their contract so provides.

Opposition procedure

Opposition must be filed within two months of the publication of the trademark application.

In particular, it must respect the formalism provided for in articles R.712-13 and following of the Intellectual Property Code.

The objection shall be in writing and shall specify the following:

• The identity of the opponent, as well as the indications likely to establish the existence, the nature, the origin and the scope of his rights;
• The references of the application against which the opposition is filed, as well as the indication of the goods or services to which the opposition relates, bearing in mind that the opposition may be partial;
• Statement of the grounds on which the opposition is based;
• Proof of payment of the prescribed fee.

An opposition filed after the deadline or which does not comply with all the above conditions is inadmissible.

Upon receipt of the opposition request, INPI informs the applicant, who has a period of two months to submit his observations in response to the opposition.

The INPI must give its decision within 6 months following the expiration of the opposition period.

If the applicant does not respond to the opposition, the INPI issues a decision directly. On the other hand, if the applicant responds to the opposition, INPI draws up a draft decision based on the various arguments presented and sends it to both parties, indicating a deadline for responding. The INPI then issues a decision based on the last observations received. In the absence of a response, the draft decision becomes final.

The time limit for processing the opposition may be suspended in three cases:

• if the earlier trademark is not yet registered;
• in the event that an action for invalidity, revocation or claim of ownership of the trademark on which the opposition is based is filed;
• at the request of both parties.

The opposition procedure can be terminated at any time, in particular by withdrawing the application for registration or withdrawing the opposition if both parties have reached an agreement.

SUBSEQUENT REJECTION OF THE TRADEMARK REGISTRATION

Reasons for refusal

The application for registration may be rejected for certain reasons:

When it does not meet the conditions of Article L.712-2 of the Intellectual Property Code;

When the sign cannot constitute a trademark within the meaning of Article L.711-1 ;

If the sign is devoid of distinctive character, unlawful, misleading or unavailable.

However, the rejection may be partial if it affects only part of the trademark application.

This is the case in particular in the context of oppositions when the Office’s examination concerns only part of the goods and services of the application.

Opposition proceedings cannot be res judicata in relation to infringement proceedings as the registration of a trade mark is an administrative act which is not binding on the courts in the case of a dispute about its validity.

Recourse

The rejection decision can be appealed.

Appeal against a decision on an objection

Pursuant to Article L.411-4 of the Intellectual Property Code, the Courts of Appeal designated by regulation hear appeals directly against decisions rendered by the Director of the INPI concerning the grant, rejection or maintenance of industrial property titles.

The appeal must be lodged with the competent Court of Appeal within one month of the notification of the decision to the applicant or opponent.

The statement of case must be filed on the day of the declaration or within one month of the declaration, failing which it will be inadmissible (R.411-21).

The Public Prosecutor’s Office and the Director of the National Institute of Industrial Property are also heard.

The appeal in cassation is open to both the applicant and the Director of the INPI.

Forfeiture of rights

In case of non-compliance with the time limits of the registration procedure, the applicant may be relieved of his rights if he can prove that he was prevented from doing so through no fault of his own or through his negligence (L.712-10).

The request must be submitted to the Director of INPI within two months of the cessation of the impediment and is no longer admissible after a period of six months from the expiration of the unobserved period (R.712-12).

The decision of the Director of INPI may be appealed under the same conditions as an appeal against a decision on an opposition.

REGISTRATION OF THE TRADEMARK

When the application for registration does not face any grounds for rejection,INPI proceeds with the registration of the trademark.

The applicant is sent a certificate of registration which attests to the ownership of his rights in the trademark.

The registration of the trademark is published in the BOPI and the trademark is entered in the National Trademark Register (RNM).

If the registration gives rise to a trademark right in favor of the applicant, the effects of the trademark right go back to the date of filing.

The trademark is thus effective for a period of ten years, renewable indefinitely, subject to the payment of fees to the INPI.

PART 2: ACQUISITION OF THE EUROPEAN UNION MARK

The European Union trademark constitutes a unitary title which produces its effects on the whole territory of the European Union.

The application for registration of a Community trademark is made to the European Union Intellectual Property Office (EUIPO).

APPLICATION FOR REGISTRATION OF THE EUROPEAN UNION TRADEMARK

SUBMISSION OF THE APPLICATION

An application for a European Union trademark may be filed by any natural or legal person, including public law entities, without any requirement of nationality or reciprocity.

Upon receipt of the application, the EUIPO verifies that the sign is graphically representable, distinctive and lawful.

It should be noted at this stage that a sign can be considered misleading or devoid of distinctive character even if it is only in the language of one Member State.

If the EU trademark application meets these requirements, it will be published in the Trademark Bulletin in all official languages of the Union.

AVAILABILITY OF THE SIGN

The sign must also be available. The application for registration must not come up against a prior art in the European Union.

The publication of the trademark application opens a period of three years during which the owners of prior rights can file oppositions.

Prior art may consist of national trademarks registered in a Member State, a registered or unregistered European Union trademark, or a trademark that is not registered but is well known in a Member State within the meaning of Article 6bis of the Paris Convention.

Prior art can also be constituted by an unregistered trademark or another sign used in the course of trade whose scope is not only local, the national part of an international registration, a PDO or PGI.

Finally, the opposition may be based on an earlier well-known trademark registered for different goods or services.

It is up to the holders of prior rights to manifest themselves within a period of three months from the publication of the application for registration and to oppose it for all or part of the goods or services concerned.

The notice of opposition is notified to the applicant for the EU trademark. At this point, a period of two months begins to run during which the parties can contact each other to try to find an amicable solution. This period is called “cooling off”.

When the “cooling off” period expires without the parties having reached an amicable settlement, the opponent has two months to complete his file with the evidence necessary to establish his right and support his arguments.

The cooling off period can be extended at the request of the parties for a maximum of 24 months.

The Office then sends the documents received to the applicant for comment within two months.

The validity of an opposition request is assessed in the same way as the infringement.

The applicant may seek to have the opposition rejected by requiring the opponent to show proof of use of the Community or national trademark on which the opposition is based, where the trademark has been registered for more than five years.

If the opposition is found to be well-founded, the registration is rejected, either partially or totally.

If the Community trademark is already registered, the existence of a prior right may also justify a request for cancellation.

Opposition decisions can be appealed to the EUIPO Board of Appeal.

REJECTION AND TRANSFORMATION

In case of rejection of the application for registration, the applicant has the possibility to transform his application into national trademark applications in the Member States.

If the application has been rejected only partially, the applicant may request conversion only for those goods or services for which the application has been rejected.

In any case, the application cannot be transformed in the States in which there is a reason that justified the rejection of the application.

Each national trademark application shall benefit from the filing or priority date of the Union trademark application.

REGISTRATION OF THE EUROPEAN UNION TRADEMARK

If the Community application is not rejected, the trademark is registered.

The registration is then entered in the Register of Community Trade Marks and published in the Community Trade Marks Bulletin in all the official languages of the Union.

The trademark shall have effect for a period of ten years from the filing date of the application and shall be renewable for periods of the same duration.

PART 3: INTERNATIONAL REGISTRATION OF TRADEMARKS

APPLICABLE INTERNATIONAL CONVENTIONS

THE PARIS CONVENTION

The Paris Convention of May 10, 1993 has a very broad scope of application given its number of adherents, namely more than 170 States.

The Paris Convention establishes a principle of independence of the rights obtained. A trademark duly registered in one country of the Union will be considered independent of trademarks registered in other countries of the Union.

However, Article 4 of the Convention provides for the so-called Unionist priority rule. The purpose of this rule is to avoid the applicant of a trademark having to make several simultaneous filings in several countries where he wishes to benefit from protection. He will thus be able to benefit from a certain period of time after a first registration in a member country to make parallel filings in other member countries without the risk of being internalized by his own registration or by a registration of a bona fide third party made in the meantime.

Priority filings benefit from the original filing date. In trademark matters, the priority period is six months from the date of filing of the first application.

However, the benefit of the priority is subject to the regularity of the registration on which it is based.

THE TRIPS AGREEMENT

The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), annexed to the Marrakech Convention establishing the World Trade Organization, concluded on April 15, 1994, is an important and wide-ranging international convention in the field of intellectual property.

As far as trademarks are concerned, article 15 of the Agreement determines the signs that may be protected and provides that the signatory States may not adopt grounds for refusal of registration or cancellation that do not comply with the provisions of the Paris Convention.

Article 19 provides for the possibility of making the maintenance of trademark protection conditional on the use of the sign.

INTERNATIONAL TRADEMARK LAW

The Paris Convention reserves to the countries of the Union the right to make special arrangements separately and it is within this framework that a number of special international conventions on trademark law have been adopted:

• The Madrid Agreement of 1891 concerning the international registration of trademarks;
• The Nice Agreement of June 15, 1957, as revised several times, concerning the International Classification of Marks;
• The Vienna Agreement of 1973 establishing the International Classification of the Figurative Elements of Marks.

THE UNION OF MADRID

The international trademark registration system was established by the Madrid Agreement of April 14, 1891 (1) and the Protocol relating to this Agreement of June 27, 1989 (2).

The States parties to one of the conventions form the Madrid Union.

The Madrid Agreement Concerning the Registration of trademarks

The Madrid Agreement, which was signed at a conference on the revision of the Paris Convention, establishes a system of international trademark registration to facilitate the acquisition of trademark rights in different countries by centralizing the filing formalities while leaving it to the designated countries to examine the application and grant trademark protection.

The application for international registration may be presented by any person who is a national of a State party to the Agreement or who is domiciled there.

However, the applicant must already hold a registration in his country of origin covering the same sign and the same goods and services.

The application for international registration must be filed in the national office of the country of origin and must indicate the countries for which the extension is sought.

The holder may, however, even after the international registration, file an application for extension to other countries with the Office of his country of origin.

The application for registration is thus transmitted by the national office to the international office of the World Intellectual Property Organization (WIPO) in Geneva, which will register it in the international register, after checking its conformity, and publish it in the WIPO Gazette of International Marks.

This registration is equivalent to international registration.

The application is then notified to the designated countries which are responsible for examining the merits of the application according to national legislation.

The international trademark registration has a term of validity of 10 years renewable at the end of each 10-year period with effect in the designated countries concerned.

National registrations subsequent to an international registration produce exactly the same effects as those resulting from national applications.

The Protocol to the Madrid Agreement

The purpose of the Protocol relating to the Madrid Agreement is not to replace the Agreement but to establish within the Madrid Union a separate system of international trademark registration based on different rules.

This system allows States that did not wish to join the Agreement to participate in the international registration system and to establish a bridge between this system and the Community trademark system.

The application for international registration may be filed by any person having the nationality or domicile of a country party to the Protocol in which a prior registration has been made.

Unlike the Agreement, the application for international registration may be based on a single prior application and not only on a registration.

The provisions of the Protocol concerning the filing of the application for international registration, its verification by the national Office, its transmission to WIPO, its recording and its notification to the authorities of the designated countries are the same as those provided for in the Agreement.

The registration has the same effect in the designated countries as a national or Community trademark if the European Union is designated.

It is then up to the national offices or the EUIPO to examine the application, as is the case for the Agreement.

The national registration is effective for a period of 10 years, renewable.

Temporary dependence of the international registration on the original registration

The international registration shall remain, for a period of five years from the date on which it is effected, dependent on the national or regional registration or registration on which it is based.

If during this period the application for a basic registration is rejected or the basic registration disappears, by cancellation or revocation, the international registration ceases to have effect.

However, if the international registration disappears, it may be transformed within three months into national applications in the designated countries or into a Community trademark application, while benefiting from the date of the international registration (Article 9 quinquies of the Protocol) or from the priority, if any.

Determination of the applicable instrument

In order to determine which instrument is applicable to an international application, the focus is on the basic application or registration.

If the registration has taken place in a country bound exclusively by the Protocol, the application for international registration is governed by the Protocol and may designate only countries party to the Agreement, whether or not they are party to the Protocol.

Where the basic application or registration is made in a country bound only by the Protocol, the application for international registration is subject to the Protocol and may designate only countries that are party to it.

If the application or the basic registration was made in a country party to both the Agreement and the Protocol, then the international registration will fall under one or the other, depending on the countries designated.

WIPO TREATIES ON TRADEMARK LAW

The Trademark Law Treaty is the result of an agreement negotiated in the framework of WIPO and adopted in Geneva on October 27, 1994, which entered into force on August 1, 1996.

It concerns only the rules of administrative procedures relating to the registration of trademarks and their renewal.

The decree of February 25, 2004 modified numerous provisions of the regulatory part of the Intellectual Property Code in order to bring French law into conformity with this treaty and to allow its ratification by a law of July 5, 2006.

PART 4: TRADEMARK REGISTRATION ABROAD: THE CASE OF THE UNITED STATES

There are several types of trademark protection in the United States:

Common law protection: non-registration protection based on use. However, the mark must be distinctive and used in the United States;

Protection by one or more states;

Protection through federal registration of the trademark with the USPTO (United States Patent and Trademark Office) which covers the entire United States.

The Federal Trademark Registration Act of 1946, known as the Lanham Act (or Trademark Act) provides the legislative framework for the examination and registration of trademarks at the federal level.

To register a trademark in the United States, there are four possibilities, some of which can be combined:

• Filing a trademark on the basis of current and actual use in the United States: in this case, proof of first use of the trademark for which protection is sought must be submitted to the Office.

This filing can be used to file variants of a trademark already registered and used, as in the case of “families of trademarks”.

• Trademark registration based on intent to use, or “bona fide intent”, in the United States: if there is no actual use, the trademark can still be registered if actual use is imminent.

Registration of the trademark will be subject to the filing of a declaration of intent to use, accompanied by evidence of actual use of the trademark in the United States.

The production of this declaration and its annexed elements can be delayed for a maximum of three years (upon request and payment of an indemnity for each extension request).

At the end of this period, if no proof of use can be provided, the mark is refused for registration.

• Filing a trademark on the basis of a trademark application or registration of a foreign country: this presupposes identity of the signs, the applicant and the goods and services covered, which must fully cover those covered in the U.S. trademark application.

If it is an unregistered trademark application, the application to the USPTO must be made within six months of the date of the original application, based on Section 44(d) of the Lanham Act.

In particular, this basis allows for a delay in the production of proof of use until the sixth year following registration. The other advantage is that the filing date of the U.S. trademark will be fictitiously the same as the original filing date on which the application is based. Nevertheless, the validity of the trademark is always subject to the intention of use, and a declaration to that effect must be made.

In order for the trademark to be validly registered, the registration in the original country must also be validated.

On the other hand, if it is a registered trademark, there is no time limit, but the application must be made on the basis of section 44(e) of the Lanham Act.

As this application is also based on intent to use, the filing of a declaration of intent to use is required. However, this declaration does not need to be accompanied by proof of use before registration.

• An international trademark designating the United States: the last possibility is of course to go through the Madrid Protocol by applying for an extension of the trademark to the United States at WIPO. WIPO will forward the application to the USPTO office, which will examine the application as for other methods.

This designation is based on intent to use and filing involving the filing of a declaration of intent to use.

However, the statement does not need to be supported by evidence of use prior to registration, and the first evidence must not be submitted before the sixth year after registration of the trademark.

Furthermore, in the case of a designation under the priority of a foreign trademark, the filing date will be that of the foreign trademark claimed. In the absence of a priority claim, the filing date retained by the USPTO will be that of the designation made at WIPO.

An international trademark application designating the United States is often preferred to a national trademark application because it is less costly, the application fee is paid only once and at a particularly advantageous rate compared to those of the USPTO.

Any individual or legal entity can register their trademark by filling out the TEAS form available on the USPTO website.

Once the application for registration of a trademark has been sent to the Office, an examiner verifies the conditions of validity of the application, namely the distinctiveness and lawfulness of the sign.

If the application complies, it is published in the Official Gazette of the USPTO, approximately 3 months later.

A 30-day objection period opens, renewable up to 120 days. If there is no opposition, the trademark is registered for a renewable period of 10 years.

In the event of a refusal of registration, either at the Office examination level or after opposition, it is possible to appeal the Office’s decision to the Trademark Trial and Appeal Board (TTAB).

However, given the particularly high cost of proceedings in the United States, these remedies are rarely used, as the expenses involved are often disproportionate to the interests at stake.