The Trademarks Law Review: France
Trademark ownership is acquired by registration at the National Institute of Industrial Property (INPI) for French trademarks, at the European Union Intellectual Property Office (EUIPO) for European Union trademarks and at the World Intellectual Property Organization (WIPO) for international trademarks, which may designate France or the European Union. The registration lasts for a 10-year period, which is renewable indefinitely.
Registration is granted following proceedings before the relevant office, where registrability of the trademark application is examined on absolute grounds and on relative grounds if an opposition is filed by a third party.
Trademark rights can be acquired by use if the trade mark is considered to be well known, as it was ruled recently regarding a rock festival (Douai Appeals Court, 16 January 2020, Case No. 2018/06301).
A trademark is a sign that serves to distinguish the goods or services of a natural or legal person and that can be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
A trademark may be constituted by denominations in all forms (such as words, combinations of words, surnames and geographical names, pseudonyms, letters, numerals, abbreviations), as well as audible signs, such as sounds or musical phrases. Figurative signs can also be registered as trademarks, such as devices, labels, seals, reliefs, holograms, logos, synthesised images; shapes, particularly those of a product or its packaging, or those that identify a service; arrangements, combinations or shades of colour. For instance, the Paris Court of First Instance admitted the protection of a trademark consisting of the red sole of Louboutin shoes, a decision confirmed by the Court of Appeal of Paris and, in a parallel case, by the Court of Justice of the European Union (CJEU).
The ownership of a trademark is conferred for the goods and services designated for the territory for which it is registered.
While civil trademark litigation is under the exclusive jurisdiction of nine specialised courts, criminal trademark litigation cases can be held before general criminal law courts. In both civil and criminal law cases, the jurisdiction will rule on the case and grant any appropriate remedies, which often include damages, injunctions not to use and publications. Also, the defendant may file any trademark invalidity or frivolous proceedings counterclaim in the same proceedings. Interlocutory proceedings may be sought before or during trademark proceedings on the merits.
Most legislation about French trademark law is compiled in Book VII of the Intellectual Property Code (IPC) as revised by Ordinance No. 2019-1169 of 13 November 2019 and Decree No. 2019-1316 of 9 September 2019. Earlier versions of Book VII, which includes the law of 4 January 1991 and subsequent modifications, apply to trademark applications filed before entering into force of the current law. Trademarks registered before 1991 are subject to the law of 31 January 1964.
EU trademark law is notably found in EU Regulations Nos. 2017/1001, 2015/2424, 204/2009 and 2868/95, as well as Directive No. 2015/2436.
Also, France takes part in many international agreements related to trademarks, whose provisions may be applied by French courts directly. The main ones are:
- Trade-Related Aspects of Intellectual Property Rights 1994, binding members of the World Trade Organization (WTO) to fixed minimum standards of protection;
- the Paris Convention of 1883, which has partially harmonised trademark law and set the right of priority;
- the Madrid Agreement, concluded in 1891, and its Protocol of 1989, which have established international trademarks – also called the Madrid System;
- the Nice Agreement of 1957, which institutes an international classification of goods and services; and
- the Singapore Treaty of 2006, which harmonises administrative trademarks registration procurements.
The French government agency responsible for industrial property is the INPI, which administers French trademarks and examines oppositions to registrations of trademarks. In addition, since 1 April 2020, it also examines main claims for cancellation of trademarks based on absolute grounds for refusal, relative grounds for refusal based on prior trademark, company name rights, geographical indications; and those based on domain names, tradenames and rights on signboards that do not have only a local scope as well as local authorities and public legal persons rights, filings made by agents trademark rights and revocation of trademarks for non-use. It is also in charge of ensuring the public availability of information about French trademarks, notably through publication of the information on BOPI, the official bulletin of industrial property, as well as through its internet trademark database. INPI decisions can be appealed before specialised civil appeal courts.
The European agency responsible for intellectual property is EUIPO, which administers European trademarks and examines oppositions to the registration of trademarks, as well as cancellation and revocation actions. EUIPO has an appeal board, whose decisions can be appealed before the European Court of Justice. EUIPO also delivers information about trademarks on its TMview database, and offers mediation services regarding intellectual property disputes.
WIPO is the agency in charge of the administration of international trademarks, which, for each territorial designation, are examined by the corresponding territorial agency. WIPO is in charge of a database of international trademarks called Madrid Monitor.
Company names are registered at the local commercial court where the company has been incorporated. There is no specific examination proceeding regarding the company name comparable to trademark registration proceedings. Research into company names can be performed on the website owned by the registries of all French commercial courts – Infogreffe.
Moreover, this organ provides informational support related to trademarks, and the importance of its activities in respect of anti-counterfeiting initiatives has increased recently.
On the European level, the EU e-justice website centralised information on how to research company registries in each Member State.
The French Network Information Centre (AFNIC) is a non-profit association and the primary operator in France of registry services on the internet. The AFNIC is the incumbent manager of domain registrations with the .fr top-level domain, among others.
iii Substantive law
Signs used in the course of business can be protected by French trademark law, specific international rules available to unregistered but well-known trademarks, unfair competition law (trade names, company names and domain names), geographical indications and specific rules that protect public local entities.
Entities may file for French or EU trademarks either through direct application or through the Madrid System, which has set international trademarks. EU and French provisions are very similar since European trademark law has been harmonised extensively. For both EU and French trademarks, absolute and relative conditions are required. Absolute grounds are those relevant to distinctiveness, lack of deceptiveness and representation, while relative grounds are those relevant to third-party rights. Collective and certification trademarks are subject to additional requirements.
Thus, to be registered as a trademark, a sign has to be distinctive and so be able to identify the owner of the intellectual property right. According to the IPC, the following signs are deprived of any distinctive character:
- signs or denominations that, in common or professional language, are exclusively the necessary, generic or usual designation of the product or service;
- signs or names that may designate a characteristic of the product or service, including the type, quality, quantity, destination, value, geographical origin and time of production of the good or of the provision of the service; and
- signs constituted exclusively by the form imposed by the nature or the function of the product, or conferring on the latter its substantial value.
Similar provisions are found in Article 7 of EU Regulation No. 2017/1001.
However, a sign that would not be distinctive per se in respect of certain goods and services can become distinctive through use prior to the application. For instance, the trademark 'vente-privée.com', which can be translated as 'private-sales.com' or 'exclusive-outlet.com', recently acquired distinctiveness through the proof of intensive use. The French Supreme Court stated that a significant part of the general public could identify the products and services as the ones of vente-privée.com.
Also, the sign cannot be deceptive. Thus, a sign cannot be adopted as a trademark if 'it is of such a nature as to deceive the public, especially regarding the nature, the quality or the origin of the good or the service', and if it is contrary to public policy and public morality. For instance, the Court of Appeal of Paris confirmed INPI's rejection of the trademark application for Label Vert, since it refers to an environmental certification, which would therefore be misleading.
Moreover, under French law since the implementation of the Directive No. 2015/2436, the sign no longer needs to be susceptible to graphic representation as required by the previous Article L711-1 of the French IPC.
Signs may have any appropriate technical representation. However, to be eligible for registration, signs have to be clear, precise, easily accessible, intelligible, durable and objective. This last condition prevents olfactory or gustatory trademarks being registered.
Finally, the trademark cannot harm third-party rights, notably on their prior trademarks, name or geographical indications. As from the Directive No. 2015/2436, the trademark cannot harm prior famous trademarks in France or in the EU, domain registrations and name of public entity or name, image or renown of public establishments of intermunicipal cooperation (EPIC).
The validity of the simple French collective trademark is subject to the filing, by the members of an association which is the proprietor of the mark, of rules for the collective trademark's use, at the same time as the filing of the trademark application. For instance, in a case in which the Ritz Hotel opposed a collective trademark owner, the Court of Appeal of Paris held the collective trademark 'Palace' to be valid for tourist services other than hotel services, taking into account that regulations for its use had been filed. Individuals may no longer register collective marks. To the contrary, associations of manufacturers, producers, suppliers of services or traders as well as legal persons governed by public law have the capacity for the registration of collective marks.
In 2019, the previous French 'collective certification trademark' became the 'guarantee trademark' that is governed by rules establishing the characteristic nature, properties, mode of manufacture of goods, or qualities required of the goods or services listed in the trademark application, and stipulating the conditions under which the guarantee trademark can be used.
EU collective trademarks (which indicate that the goods or services protected by that mark originate from members of an association, and may only be used by them) are also subject to a requirement for rules of use to be filed as an integral part of the collective trademark. However, as an exception, EU collective trademarks may be valid even if the sign can be used to designate the geographical origin of goods or services.
EU certification marks (which indicate that goods or services meet certain characteristics, as defined in the regulations of use) have also been available since 1 October 2017.
Well-known unregistered trademarks – Paris Convention
Article 6 bis of the Union of Paris Convention offers a national protection to unregistered trademarks that are well known. These trademarks have to be 'known by a large portion of the public'.
General civil liability protection of trade names, company names and domain names
Under the general rules of civil liability, trade names, company names and domain names can be protected and opposed to subsequent users or to trademark applicants.
A company name can be protected as soon as the company is registered with the Trade and Companies Register. The scope of protection is limited to the company's activity.
Protection of trade names may be generated through a personal and public use to identify a business. Protection is available even if the trade name has not been filed at the Trade and Companies Register.
French law and practice ensure protection of domain names through the general rules of civil liability.
For a long time, geographical indications have been protected by French law, first nationally and subsequently on an EU level. Initially, geographical indications aimed to protect agricultural products. Manufactured goods are now also eligible for protection.
Name and image of local public entities
Since 2015, local public entities have been able to assert their rights to their image and name, and to oppose applications that may infringe these rights. Such entities may also benefit from INPI's monitoring services to facilitate filing oppositions to trademark registrations.
Registration of marks
i Inherent registrability
A French trademark application may be filed by one or more legal or natural persons, by a French person, or by a foreigner if he or she is a beneficiary of the CUP, or a national of a WTO Member State, or domiciled in France. Similar requirements are found for EU trademarks. The application can be made by the applicant him or herself, or by a qualified representative (which is mandatory when the trademark is registered on behalf of several persons or when the applicant is neither established nor domiciled in France, not in a Member State of the European Union nor in a European Economic Area country). The applicant has to provide a model of the trademark and must enumerate the goods and services covered by it. The application provides a national number recorded on the receipt or notified to the applicant. Third parties may make observations during a period of two months following this publication and, if necessary, file an opposition.
The INPI and EUIPO examine only absolute grounds for refusal, performing an assessment of the sign and the designated goods and services.
The INPI does not search for previous potentially conflicting trademarks.
It is possible to request to modify or withdraw, totally or partially, the application up until INPI starts to make the technical arrangements for registration. Such requests must be in writing.
The procedure before the European Trademark Office is quite similar: the first step is a verification of the formal compliance of the application with Regulation No. 2017/1001, then the list of goods and services is sent to the Translation Centre for the Bodies of the European Union, in Luxembourg. If it has been requested, a research report can be drafted about potentially conflicting trademarks; the report can also cover national marks, in which case a request is transmitted to the required national trademark office. All reports are then sent to the applicant before the European Trademark Office considers absolute grounds of refusal. Afterwards, the application is published in the EUTM Bulletin; oppositions can be filed within three months of this publication.
Once an application is filed, the owner receives a six-month priority right to make other applications in Europe or abroad, while keeping the initial application date.
For both French and EU trademarks, registration takes effect from the date of filing of the application for a period of 10 years, which is renewable indefinitely.
The renewal of French trademarks must be made within a period of six months, expiring on the last day of the month in which the period of protection ends. However, the declaration can still be made within six months of the day following the last day of the month in which the protection expires, but a supplemental fee has to be paid.
EU trademarks may be renewed six months before their expiry date, and they also benefit from a six-month grace deadline, subject to payment of a fee (an additional 25 per cent).
The charges for a trademark application at INPI covering one class of goods or services are €190 for an internet-based application. The cost increases by €40 per additional class. The charges for renewal fees are €290 increased by the cost of each additional class.
Charges for an EU regular trademark application designating one class are €1,000 for a paper application and €850 for an electronic application; an additional €50 is charged for a second class and €150 for all subsequent classes. Renewal fees are the same as filing fees.
ii Prior rights
Article L711-3 of the French IPC establishes the following open list of rights that may constitute a prior right to a trademark: registered or famous trademarks, company names, trade names, domain registrations 'whose scope is not only local', geographical indications, copyrights, industrial designs, third-party personality rights (especially a family name, pseudonym or image), and name of a public entity or name, image or reputation of an EPIC.
The prior-right assessment depends on the right invoked. For prior trademarks, company names, domain registrations, trade names and names of a public entity, it will be the likelihood of confusion between the signs at stake; for famous or famous signs, it will be an assessment of the harm to the prior sign. Also, regarding third-party personality rights, it can be an assessment based on civil liability and, therefore, more generally, an assessment of the harm to the prior right.
iii Inter partes proceedings
Third parties may file oppositions within two months of the publication of an application. There is no possible extension of this deadline. Opposition proceedings are available to:
- the owner of a trademark that was registered or applied for earlier;
- the owner of a famous trademark;
- the owner of a trademark that has an earlier priority date;
- an exclusive licensee;
- the director of the agency in charge of the indications of origins and geographical indication; and
- local public entities.
As of May 2016, all oppositions have to be filed online on the INPI's website. The opposition is notified to the applicant. The applicant has at least two months to present counter-observations. If the applicant fails to do so, the INPI will make a decision on the matter. In the case of response by the applicant, the opposition proceedings becomes a contradictory procedure. The applicant may request evidence of use of the prior trademark if it has been registered for more than five years. The opponent has one month to contest the applicant's observations and, if requested, to present evidences of use. The applicant can respond within one month, which opens a new one-month period for the opponent. The applicant then has a third and final period of one month to submit his or her final observations, which may not include any new means. Once this contradictory phase is over, the INPI will issue a decision within three months. INPI fee for filing an opposition is €400 for one prior right and €150 for each additional prior right. The opposition may be filed by the right holder or by appointed counsel.
Opposition proceedings are also available against EU trademark applications and must be filed within three months of the publication of the application. The opposition fee is €320. After the opposition is declared admissible, there is a cooling-off period during which the parties are given the opportunity to terminate the proceedings. Afterwards, parties are each given two months to communicate their arguments on the case; there can be several exchanges of briefs. EUIPO will then make a decision about the opposition.
If an EU opposition succeeds, the applicant will have to pay the other party's costs if it fails, the opponent will have to bear the costs. In the case of only partial loss, the costs will be shared. There are no such provisions regarding French trademarks.
Since the implementation of the Directive No. 2015/2436, trademarks can be challenged by various invalidity actions before the INPI when there is no other associated claim, without any need to show interest to sue. Actions must be founded on absolute grounds related to distinctiveness, lack of deceptiveness and representation; or relative grounds such as prior trademarks, name or geographical indications, company names, trade names, domain registrations and name of public entity.
For invalidity actions founded on relative grounds such as copyrights, industrial designs and third-party personality rights, and on absolute grounds related to public order, the proceedings take place before a court specialised in trademark law that has territorial jurisdiction on the case. Proceedings will also take place before such specialised court for invalidity claims, whatever the grounds invoked, connected with any other action falling within the jurisdiction of the court.
If the trademark is not distinctive, if it is deceptive, contrary to public policy and public morals, or if it cannot be represented, any interested party can request its invalidation. However, if the trademark infringes a prior right (trade name, surname, copyright), only the holder of the prior right can initiate an action.
Infringement actions based on prior rights, whether copyright or trademark, as well as civil liability actions (i.e., rights on a corporate name), can also be brought against a trademark before a specialised court, and can lead to its invalidation.
Trademark property claims
Trademark ownership may be claimed by a party who considers that the trademark has been applied for fraudulently.
Judicial first instance proceedings usually last nine to 18 months. The court fees are a few hundred euros.
An appeal against a ruling from the INPI rejecting a trademark may be lodged within one month of the ruling before the specialised appeal court that has jurisdiction on the territory where the claimant resides. The deadline is extended by a month if the appellant resides outside Metropolitan France and by two months if the appellant resides outside France. These proceedings usually last four to 12 months.
Civil actions and applications related to trademarks, including those with issue of unfair competition, shall be brought exclusively before the specialised courts of first instance, which currently are Bordeaux, Fort-de-France, Lille, Lyons, Marseilles, Nanterre, Nancy, Paris, Rennes and Strasbourg.
Litigation based on unfair competition law shall be brought before commercial courts only if both parties are merchants, and before civil courts if one of them is not a merchant.
ii Pre-action conduct
Since 2015, it has been mandatory to prove that an attempt has been made to reach an amicable solution before beginning a proceeding, or to justify due cause for not fulfilling this obligation.
Under French law and practice, several alternative dispute resolution methods are often used. Many cases are settled before any legal action starts and the settlement may prohibit subsequent legal proceedings. Mediation is another kind of alternative dispute resolution. More and more courts are nominating mediators during commercial law proceedings. Arbitration proceedings are also regularly used, since Paris has several arbitration courts.
However, it is not possible to obtain the revocation of a trademark (nor the nullity of any intellectual property right for that matter) through these alternative methods. The decisions rendered are only enforceable inter partes, as opposed to judicial decisions, which are enforceable erga omnes. Nonetheless, these procedures may ensure confidentiality as well as an outcome that may be applicable around the world.
Should an amicable outcome not be possible, the party that wishes to initiate proceedings needs to gather all evidence to show its rights and how they are harmed. To do so, the plaintiff may seek to initiate seizure proceedings, which are available to a party after a judge issues a court order specifying the date, place and type of seizure (either a mere description or the judge can also allow the seizure of samples, devices involved in the infringing process, or any documentation pertaining to the infringing activity). A bailiff conducts the seizure; he or she can be assisted by experts (in software, a trademark and patent attorney, a locksmith, etc.) who cannot, under any circumstances, dictate any part of the report at risk of seeing the entire procedure cancelled (the courts are extremely strict on that point). Proceedings must be initiated within 20 working days or 31 calendar days of the seizure.
iii Causes of action
Trademark infringement is the most common cause of action. It involves opposing trademark rights to undertakings that use the protected sign for identical or similar goods or services. It is required to establish likelihood of confusion when the signs, goods or services are not identical.
Unfair competition law
Unfair competition regulated by civil liability provisions is often used either as an additional claim or as a subsidiary claim. It can cover many types of conduct, notably disparagement, which means spreading pejorative and malicious information about a person, a company or a competitor's products. Unfair competition law also prohibits generating confusion in customers' minds between companies or their products. This is the behaviour by which an economic agent interferes in the activity of another to profit, without spending anything, from its efforts, investments and know-how. Most case law in the digital arena, notably on domain names and the look and feel of web pages, is based on these general civil law rules.
Family or corporate names
Disputes related to conflict between trademarks and family names or surnames are common. They can be based on trademark law to oppose the registration of trademarks that may harm family or corporate names, as well as on civil liability or rights of personality. In practice, many court cases involve contract law. In the famous Bordas case, the Supreme Court ruled that inalienability and imprescriptibility of a patronymic name are not obstacles to the conclusion of an agreement related to the use of the patronymic name as a trade name. The Ducasse case gave additional details. The Supreme Court ruled that the consent given by a partner, whose name is well known, to the insertion of his or her surname in the denomination of a company that has an activity in the same area, would not, without his or her agreement and in the absence of renunciation to his or her property rights, allow the company to register this surname as a trademark to designate the same goods or services. More recently, the Supreme Court held that an individual agreement to use a name was a contract performed successively. Therefore, even if the agreement did not include any term, that term is not qualified as a perpetual contract. Hence, it constitutes a contract of an undetermined period that each party can terminate at any time, with fair notice.
iv Conduct of proceedings
A plaintiff can request the communication of pieces of evidence related to any alleged infringement from the delegate of the President of the Paris Court before legal proceedings are initiated (notably with seizure proceedings) or, once proceedings are pending, by presenting a petition to the judge in charge of the case management. It enables the right holder to take the full measure of the extent of the infringement, both in terms of the network (producers, distributors and all involved parties in between) and the quantities concerned (of goods, benefits made, etc.). The time frame for gathering such evidence varies from half a day to a couple of months. Moreover, the owner of a trademark can request customs seizures and follow up with civil or criminal law proceedings.
Judicial proceedings start with the filing of a complaint that has been served to the defendant and then filed at court. According to the Paris Bar and Paris High Court Civil Procedure Protocol signed on 11 July 2011, for proceedings on the merits, there should be a total of four briefs, including the complaint. An argument or an element of fact not referred to in these writings cannot be taken into account by the court. The defendant is the one who responds last. The case is heard at final oral pleadings by one to three professional judges, and the ruling is issued a couple of weeks later.
First instance disputes related to trademark proceedings, such as infringement, dilution, invalidity or unfair competition claims, last nine to 12 months.
An appeal can be lodged within the shortest of the following deadlines: one month after the notification of the ruling for French residents (two months for persons located in France but outside metropolitan France and three months for foreign residents); or two years after the date of the ruling.
Urgent proceedings and interlocutory proceedings may take a couple of days or weeks. They start with a written complaint served to the defendant and then filed at court. Urgent proceedings are, by nature, oral, but parties often file briefs ahead of the oral pleadings to support their final oral argument. The deadline to appeal against interlocutory proceedings is either two years after the ruling or 15 days after notification of the ruling for French residents; one month and 15 days for persons located in France but outside Metropolitan France; and two months and 15 days for foreign residents.
Appellate proceedings take between one and two years.
The losing party can be ordered to pay the other party's court fees and all other costs.
In any of these proceedings representation by a lawyer is mandatory; however, proceedings before the commercial court (which may have jurisdiction in cases about company names or trade names not involving trademark law) do not require representation by a lawyer.
In civil proceedings, courts may order several remedies for infringement, often granted with the benefit of immediate execution and therefore enforceable even if appellate proceedings are filed. The most usual are financial compensation or a prohibition order. Courts may also grant the confiscation or destruction of counterfeiting goods and their means of production, the publication of the judgment and, more generally, the award of damages based on the negative economic consequences of counterfeiting, including losses incurred and lost profits, moral damage, and the profit made by the counterfeiter. However, the injured party can request a lump sum as damages that exceeds the amount of the royalties or fees that would have been paid if the infringer had applied for authorisation to use the infringed right. This lump sum is not exclusive of compensation for the moral damage caused to the injured party.
Other enforcement proceedings
In practice, most cases are heard before civil courts. However, trademark infringement proceedings may be initiated by the owner, the public prosecutor or the customs authorities since trademark infringement is also a criminal law tort. In particular, the IPC provides that trademark infringement shall be punished by a prison term ranging from three to five years (depending on the type of conduct) and by fines ranging from €300,000 to €500,000. A trademark infringement case is heard before the general criminal law court after an investigation by customs, the police or a judge. These proceedings may be a very helpful deterrent and enable the trademark owner to find infringement networks. However, the case may take a couple of years longer and the allocated damages and legal fees may be considerably lower.
Customs proceedings are also very commonly used. EU Regulation No. 608/2013 and national law (the Customs Code) allow – for both French and EU trademarks – detention or seizure of counterfeit goods. The right holder and the exclusive authorised licensees can submit applications for such customs proceedings. Customs authorities can also proceed on their own initiative.
While Regulation No. 608/2013 is applied at the external borders of the EU, French legislation is applicable to commerce between Member States. If counterfeit goods are found by customs authorities, following the notice of the seizure, the right holder or person with appropriate decision-making authority has 10 days to inform the customs authorities that he or she is engaged in legal proceedings, otherwise the customs authorities would have to release the goods.
Recent and pending cases
Some interesting cases regarding the distinctiveness of trademarks have been ruled on in 2019 and 2020.
For instance, the Paris Court of Appeal ruled that 'Voyager' was distinctive for watches and that that 'SonoVente.com' was distinctive for recording goods, in both cases the Court annulled the prior decision from the INPI.
On the infringement side, the Criminal Chamber of the Supreme Court held that both a company and its director were liable for trademark infringement considering that such director had the obligation to check whether the goods were infringing goods even if the purchase had been performed by an employee.
The effect of Brexit on EU trademarks is a major concern for rights owners, who will probably need to find reliable, yet cost-effective, ways to secure their rights in both the EU and the United Kingdom.
The implementation of the 'trademark package' in France will grant, to both courts and national authorities, jurisdiction to decide on invalidation and revocation proceedings. It therefore raises many questions about trademark invalidity proceedings in the coming years; in particular, how invalidation or revocation proceedings will be handled in conjunction with infringement proceedings.