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The availability of the sign

Cabinet Bouchara

Updated on January 07, 2021
The availability of the sign

To be registered as a trademark, the chosen sign must, in addition to being lawful and distinctive, be available. Indeed, article L.711-3 of the Intellectual Property Code states that “a trademark that infringes on prior rights effective in France cannot be validly registered and, if registered, may be declared invalid”.

The requirement of availability to guarantee the original identification function of the trademark

This condition of validity derives from one of the essential functions of the trademark, namely the identification of the origin of the goods and services it designates (ECJ, now CJEU, 22 June 1976, C-119/75, Terrapin).

A trademark must allow the consumer to associate the goods and services concerned with a specific entity and to distinguish them from those of its competitors. Otherwise, competition would be distorted.

However, the presence of two identical or similar trademarks to designate similar goods and services will necessarily lead to a risk of confusion in the mind of the public, which will be likely to attribute a common origin to them, even though they come from different companies.

When examining a trademark application, most Intellectual Property Offices (notably INPI, EUIPO and WIPO) do not check the availability of the sign and only examine the conditions of lawfulness and distinctiveness.

The availability of the sign may be challenged by third parties from the date of publication of the trademark application.

If the trademark is not yet registered, third parties may file an opposition to the application within two months (before the INPI) or three months (before the EUIPO) following the publication of the filing (Article L. 712-4 and R. 712-8 of the Intellectual Property Code, Article 46 of the European Union Trademark Regulation).

This is an administrative procedure brought before the Intellectual Property Offices.

It is the applicant’s responsibility to ensure that there are no prior rights held by third parties that could impede his trademark registration.

This is why it is imperative to perform a thorough prior art search prior to filing.

Such a search makes it possible to identify prior rights likely to constitute potential obstacles to trademark registration, namely identical or similar signs (anagrams or inversions of words, signs with a common architecture, etc.) identifying identical or similar activities.

Once the trademark has been registered, third parties may still bring an action for invalidity against the contested trademark, either through administrative channels before the Offices or through judicial channels before the Courts.

“A trademark that infringes on prior rights having effect in France cannot be validly registered and, if registered, may be declared invalid.”


Prior art likely to call into question the availability of the sign

The prior rights that can be invoked in the context of these actions are the following (Article L.711-3 of the Intellectual Property Code):

  • An earlier trademark;
  • A name or company name;
  • A trade name, a sign or a domain name, whose scope is not only local;
  • A registered geographical indication ;
  • Copyrights;
  • Rights resulting from a protected design;
  • A third party’s personality right, in particular to his or her surname, pseudonym or image;
  • The name, image or reputation of a local authority or a public establishment of inter-municipal cooperation;
  • The name of a public entity, if there is a risk of confusion in the public mind.

Prior art can be established if the claimed right was filed or disclosed prior to the challenged trademark filing.

If the question of proof of anteriority does not arise when the right invoked has been registered (e.g., trademark) or registered (e.g., company name), it can be complex in the case of copyright.

Indeed, a work of the mind is protectable under copyright by the mere fact of its creation (Article L. 111-1 of the Intellectual Property Code).

The acquisition of this right is therefore not subject to any particular formalism.

It will be up to the author to prove that his work was disclosed prior to the filing of the contested trademark.

Finally, in order to be invoked, the prior right must be valid in the territory in which the contested trademark was filed.

Demonstration of a risk of confusion with regard to the principle of speciality

In order to challenge the availability of a trademark, it is necessary to be able to characterize the existence of a risk of confusion in the mind of the public between the prior right invoked and the challenged trademark.

Under the principle of specialty, the protection of a trademark is not absolute and is limited to the goods and services it identifies (See in particular CA Aix-en-Provence, March 30, 2017, n°14/10911).

This principle therefore makes the sign unavailable in the economic sector covered by the prior right but leaves it appropriable for other sectors.

Thus, in most cases, even if two signs are perfectly identical, the likelihood of confusion can be ruled out if the signs are used for different goods and services, as the public is not entitled to attribute a common origin to them in such a case.

In order to challenge the availability of a trademark, the applicant must demonstrate the existence of a likelihood of confusion, in particular if he invokes the following rights in support of his application

  • A trademark

The likelihood of confusion is assessed globally with respect to the signs and the goods and services at issue (See in particular, March 25, 2014 No. 13-690).

The overall impression produced by the trademarks must be taken into account (ECJ, now CJEU, 11 November 1997, Aff. C-251/95, Sabel C/ Puma).

Thus, “a low degree of similarity between the designated goods or services may be compensated by a high degree of similarity between the marks and vice versa” (ECJ, September 29, 1998, Canon Kabushiki Kaisha C/ Metro-Goldwyn-Mayer).

Particularities of the trademark

According to the principle of specialty, even if the signs are identical, in the presence of different goods and services, the marks will not be considered similar so that the validity of the subsequent mark cannot be challenged on this basis.

This basic principle can be tempered, however, when the earlier trademark is a reputed trademark, which enjoys extended protection beyond the goods and services for which it was registered.

As an exception, a reputed trademark may be invoked in any case, even if its goods and services have no connection with those designated by the contested trademark (Article L. 713-3 of the Intellectual Property Code).

It will be up to the owner of such a mark to demonstrate that through its intensive and often long-standing use, a large part of the public is aware of it.

Particularities of the well-known trademark

Unlike the reputed trademark, the well-known, unregistered trademark does not escape the principle of speciality and can only be invoked against a later trademark if the goods and services in question are identical (Article 6 bis of the Paris Convention).

  • A domain name

The domain name identifies a website.

It can constitute prior art justifying the cancellation of a trademark provided that it was used before the trademark was filed.

The likelihood of confusion can be established if the trademark is composed of a sign similar or identical to the radical of the domain name, which must necessarily be distinctive with respect to the goods or services that are the subject of the website’s activity.

The Court of Appeal has indeed cancelled the trademark “Pilotimmo” which designated real estate business services since this registration infringed the domain names “” and “” operated prior to the registration of the trademark for similar activities (CA Aix en Provence July 4, 2019 n°17/01088).

The domain name must also be operated in France.

This national exploitation is established as soon as the activities of the Internet site are directed towards French customers (Cass. Com. January 11, 2005, n° 02-18381).

  • A name or company name

The corporate name serves to individualize a legal entity in the context of its activities.

It can constitute prior art that can be used against a trademark as soon as the company is registered, provided that it can be shown that the corporate name is used for activities that are identical and/or similar to the goods and services identified by the contested trademark.

The Court of Cassation was thus able to rule out the risk of confusion between the trademark “Face sud – escalade – canyoning – via ferrata” registered in particular for leisure activity services and the corporate name “Face sud” of a company specializing in work at heights (Cass.Com. January 25, 2017 n°15-20.151).

  • A commercial name, a sign

The trade name/trademark allows a clientele to identify the business being operated.

The rules are the same as for the corporate name.

However, the prior art must be known throughout the national territory at the time of filing in order to be validly opposed to the registration of the trademark.

If the trade name/trademark  has only a local influence, it cannot be validly invoked.

Prior to any trademark registration, a search for prior art must be carried out systematically.

Indeed, it is very risky to adopt a sign that infringes on prior rights.

In order to apprehend and analyze this risk, there are several types of prior art searches that can be performed on the existence of identical trademarks, the existence of similar trademarks (whose similarities will be assessed from a phonetic or figurative point of view, etc.), company names and domain names.

In an analogical search, all variants are searched in order to determine, in a precise manner, whether there is a risk of confusion with an earlier mark.

Most often, it is similar marks that are opposed to an application and not identical marks.

This search for similarities is therefore essential to be carried out, preferably by a professional, an Industrial Property Lawyer specialized in intellectual property law.

A thorough prior art search allows us to detect all prior rights that may constitute an obstacle to the registration of a trademark (in particular trademarks, domain names and company names), and to assess the risk of opposition from third parties.

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