{"id":11537,"date":"2021-01-12T10:58:44","date_gmt":"2021-01-12T09:58:44","guid":{"rendered":"https:\/\/www.cabinetbouchara.com\/the-availability-of-the-sign\/"},"modified":"2025-03-21T05:15:46","modified_gmt":"2025-03-21T04:15:46","slug":"the-availability-of-the-sign","status":"publish","type":"post","link":"https:\/\/www.cabinetbouchara.com\/en\/the-availability-of-the-sign\/","title":{"rendered":"The availability of the sign"},"content":{"rendered":"

T<\/span>o be registered as a trademark<\/a>, 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”<\/i>.<\/p>\n

The requirement of availability to guarantee the original identification function of the trademark<\/h2>\n
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This condition of validity derives from one of the essential functions of the trademark<\/a>, namely the identification of the origin of the goods and services it designates (ECJ, now CJEU<\/a>, 22 June 1976, C-119\/75, Terrapin).<\/p>\n

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.<\/p>\n

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.<\/p>\n

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

The availability of the sign may be challenged by third parties from the date of publication of the trademark application.<\/p>\n

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).<\/p>\n

This is an administrative procedure brought before the Intellectual Property Offices.<\/p>\n

It is the applicant’s responsibility to ensure that there are no prior rights held by third parties that could impede his trademark registration<\/a>.<\/p>\n

This is why it is imperative to perform a thorough prior art search<\/a> prior to filing.<\/p>\n

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.<\/p>\n

Once the trademark has been registered, third parties may still bring an action for invalidity<\/a> against the contested trademark, either through administrative channels before the Offices or through judicial channels before the Courts.<\/p>\n<\/div>\n

“A trademark that infringes on prior rights having effect in France cannot be validly registered and, if registered, may be declared invalid.”<\/span><\/h3>\n

Prior art likely to call into question the availability of the sign<\/h2>\n
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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):<\/p>\n