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Ab Initio
Paris, France (FR)

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Paris, France (FR)

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France (FR)

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06-14-2016 (Newsletter Issue 11/16)
Submission of Trademark Opposition via E-Service Required
As from May 1, 2016, the French National Trademark Office requires the submissions of trademark oppositions only via e-service.

In addition, as from June 1, 2016, all subsequent exchanges (observations in reply to the opposition) and also submission of observations must be submitted exclusively via the online service of the Office.

This is pursuant to the decision of the Director n°2016-69 of April 15, 2016 which can be accessed here (available in French only). This is also in accordance to urge the public to use e-services.

Source: Ab Initio, France


05-02-2016 (Newsletter Issue 8/16)
Scope of IR Protection on French Overseas Territories
WIPO announced that the National Industrial Property Institute of France (INPI) has provided information to WIPO on the French Overseas Territories which are covered by a designation of France or a designation of the European Union in an application for international registration or in a designation subsequent to the international registration.

For further information, please see the public note here

Source: www.wipo.int


07-14-2015 (Newsletter Issue 11/15)
Official Fees Increased/New Rules on Deadlines
The French National Trademark Office (INPI) increased the following official fees for some trademarks procedures since July 1, 2015.

The new official fee
- for a paper trademark application of up to three classes is now EUR 250 (instead of EUR 225)
- for a trademark application via e-filing of up to three classes is now EUR 210 € (instead of EUR 200)
- for a trademark renewal of up to three classes is now EUR 250 (instead of EUR 240)
- per additional class of goods/services (either for filing or renewal) is now EUR 42 (instead of EUR 40)
- for the amendment of a clerical error on a trademark is now EUR 104 (instead of EUR 100)
- for filing an opposition against a trademark is now EUR 325 (instead of EUR 310)

Further, a new Decree No 2015-511 of May 7, 2015 has been published in the Official Journal of May 8, 2015. The said Decree lists new rules on deadlines especially with trademarks, i.e.:
- The French TM Office (INPI) is now required to act within a period of six months from the filing of the application (filing or renewal).
- In the absence of an express decision within this period of 6 months, the application (filing or renewal) shall be deemed rejected.
- These provisions apply to all applications including the pending ones.

Source: Inlex IP Expertise, France


03-31-2015 (Newsletter Issue 5/15)
Official Fees Increased Soon
The French National Trademark Office (INPI) has informed that the trademark application fees will increase on average 4 percent as from July 1, 2015:

For a paper trademark application of up to three classes, the official fees will be EUR 250 (instead of EUR 225)
For an e-filing of up to three classes, the official fees will be EUR 210 (instead of EUR 200)

With regard to the additional classes, no information have been communicated for now. However, the INPI does not exclude to increase the current amount of EUR 40 due for each additional class (no matter whether paper or electronic application).

Source: Inlex IP Expertise, France


07-08-2014 (Newsletter Issue 11/14)
Practice Change to French Polynesia
A new decree dated on 23 May 2014 came into force further to the cooperation convention concluded between French Polynesia and France for IP matters. The decree implies two important changes:

French trademark attorneys do not need to submit a PoA signed by their clients for any trademark matters. This exemption is applicable for all the regulated legal professions.

In case of extension of protection related to trademark renewals, it is mandatory to get these trademarks formally reconfirmed by the local authorities before the publication date of the renewal. In some exceptional circumstances, it is possible to ask the French Polynesia TMO to postpone the reconfirmation request at a later date subject to state reasons for the same.

Source: Inlex IP Expertise, France


07-04-2014 (Newsletter Issue 11/14)
Regional INPI Offices No Longer Entitled to Receive Filings
Since 1 July 2014, the regional delegations of the French Industrial Property Institute (INPI) are not entitled to receive any filing anymore. Thus, they also do not have any authority to affix a date of filing or official reception. In consequence, any Trademark applications, renewals, recordals and oppositions shall be submitted at the headquarters of the INPI or electronically or by facsimile with confirmation letter where available.

Source: Inlex IP Expertise, France


02-04-2014 (Newsletter Issue 2/14)
Change of Opposition Procedure Awaited
Oppositions against French trademark applications can only be filed on the basis of one trademark application or registration (French TM, CTM, International Tm covering France) or on the basis of a well-known trademark.

This old system is to be changed very soon as far as it may be possible in the next few months to base an opposition on:

- The name of a territorial authority (such as the name of a town; Paris or Cannes for instance) on the basis of the rule L.711-4h of the French IP Law. The draft legislation (named “Hamon Law”) is expected to be signed in February 2014 and its implementing decree is awaited for April or May 2014.
- The name of an Appellation of Origin or a protected Geographical Indication (such as Champagne or Roquefort) on the basis of the rule L.711-4d of the French IP Law. An amendment from the Government has just been voted in January 2014 by the National Assembly.

The French TMO is also thinking about dematerializing this administrative procedure and setting up an “e-opposition” system, which should come into force within December 31, 2016.

Source: Inlex IP Expertise, France


09-17-2013 (Newsletter Issue 13/13)
Local Trademark Regulation in French Polynesia
French Polynesia adopted a local trademark regulation, with the local Law n°2013-14 dated May 6, 2013 and the Local Decree n°1002/CM dated July 22, 2013.

In this new system, the former competences of the French national Office (INPI) are transferred to a local Polynesian Administration.

Owners of French national trademarks looking for protection in French Polynesia have to be especially vigilant as to the filing date of their French trademarks, which determines the action to be taken and the scope of protection:

- The recognition of currently valid French trademarks filed prior to March 3, 2004 (date of the autonomy Law of French Polynesia) is automatic in French Polynesia.
- The recognition of currently valid French Trademarks filed between March 3, 2004 and August 31, 2013 is optional. In this case, the protection in French Polynesia is subject to four requirements, namely a formal recognition request filed by the applicant before August 31, 2015 with the local Polynesian Administration (1), the payment of official fees (2), a formal recognition by Decree of the President of French Polynesia (3), and the publication of this Decree in the official Polynesian Gazette (4)
- From January 1st, 2014, applicants filing new French trademark applications with INPI will have the possibility to extend the protection in French Polynesia, subject to the payment of the corresponding tax. However, there is no precision regarding the period between August 31, 2013 and January 1, 2014.
- From the second semester of 2014, applicants willing to protect their trademarks in French Polynesia only (not in France) will have the possibility to file a direct application with the Polynesian Administration.

There is still a grey area for the period between September 1, 2013 and December 31, 2013 as no regulation have been issued yet.

Source: Ab Initio, France


09-17-2013 (Newsletter Issue 13/13)
Ongoing Reform in New Caledonia
After shifting certain legislative functions from mainland France to New Caledonia on July 1, 2013, New Caledonia is from now competent regarding the protection of intellectual property rights on its territory.

On August 27, 2013, the government of New Caledonia adopted a draft law on the temporary protection of IP rights. The definite local IP Law applicable in New Caledonia is expected for July 1, 2014 at the latest.

Until the official issuance of the local Law, French intellectual property rights, including French mainland trademarks applied for or registered by the INPI as from July 1, 2013, will also be valid in New Caledonia.

There is no precision in the draft law yet as to whether Community Trademarks and International Trademarks designating France also cover New Caledonia.

New Caledonia authorities are considering a partnership with the French mainland Office (INPI) for handling the legal formalities of protection of intellectual property rights on its territory.

Source: Ab Initio, France


11-19-2012 (Newsletter Issue 17/12)
Change of Address of Patent Office
The French National Office INPI has moved to new premises:

Institut National de la Propriété Industrielle
15, rue des Minimes
92400 Courbevoie
France
Tel +33 1 71 08 71 63
Fax +33 1 56 65 86 00

Source: www.inpi.fr and Inlex IP Expertise, France


Legal basis is the Industrial Property Law of January 4, 1991 (No. 91-7) regarding trademarks and service marks and the Laws of October 29, 2007 (No. 2007-1544) and March 11, 2014 (No. 2014-315) against counterfeiting, both consolidated in the Intellectual Property Code.
A French trademark also gives protection on Corsica and in the following French overseas departments: French Guyana (GF), Guadeloupe (GP), Martinique (MQ), Mayotte (YT) and Réunion (RE) since 2011. It also provides protection in the French overseas collectivities: New Caledonia (NC), Saint-Barthelemy and the French part of Saint-Martin, St. Pierre and Miquelon (PM), Wallis and Futuna (WF) as well as the French Southern and Antarctic Lands (TF).
Only Guadeloupe, Martinique, French Guyana, Réunion and the French part of Saint-Martin are covered by European Union Trademarks.
In 2013, the local authority of French Polynesia (FP) reformed its applicable IP Laws and the local trademark system.
France is a member of the Madrid Agreement, the Madrid Protocol and the European Union.
Trademark protection is obtained by registration (except famous trademarks).
With France being a member of the Paris Convention for the protection of industrial property, pursuant to Article 4, priority right can be claimed.
Nice classification, 10th edition
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, geographical names, holograms, colours, colour combinations, dispositions of colours, the three-dimensional form of a good or its packaging and any combination of the mentioned signs. Sound marks and olfactory marks can be registered, but must be suitably described and graphically represented to be approved by the National Institute of Industrial Property (I.N.P.I).
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks and titles of establishment.
The application is filed at the National Institute of Industrial Property (INPI).
Trademark applications are possible by post as well as electronically.
Trademark applications by facsimile are also possible, except for trademarks in colours. The applications by facsimile must be regularised within two days by sending the original documents and the proof of payment of the official filing fees.
Multiple-class applications are possible.
Foreign applicants in the EU or in the EEA do not need a local agent. A postal address within France is sufficient. Foreign applicants which are not in the EU or in the EEA need a local representative. A local representative is also needed for applications filed in the name of several applicants.
A power of attorney is compulsory, except if the applicant is represented by a professional IP trademark attorney (Conseil en propriété industrielle in French) or an attorney at law.
Foreign applicants do not need a domestic registration.
The application process includes a formal examination and an examination of distinctiveness, but no search for prior trademarks. Signs not deemed distinctive in the examination can be registered if distinctiveness has been acquired through a longstanding use at the date of filing.
The processing time from first filing to registration or first office action is approx. 4 to 6 months.
Trademarks are published twice in the weekly Gazette “B.O.P.I. marques”: The application is first published for third-parties opposition purposes. After registration, the trademark is also published.
National:
As from May 1, 2016, opposition are necessarily filed electronically through a platform accessible on the Office website. As from June 1st 2016, all correspondences and documents are necessarily filed electronically.
The opposition period is 2 months after publication of the trademark application. A fee of Euro 325 must be paid at the time of the filing of the opposition. Extension of the opposition period and formal opposition are not possible. The opposition is deemed to be rejected if the administration does not render a decision within six months from the expiration of the opposition period. The opposition proceedings can be suspended on joint request of the parties for a three-month period. Only two suspensions can be granted (suspension of six months maximum). An opposition can not be based on multiple trademarks. The applicant may request proof of use of the opposed trademark which is subject to obligation of use. If no proof relating to at least one of the opposed goods/services is submitted, the opposition is rejected.
Evidence of use for only one good or service used as base of the opposition is enough to pursue the proceedings. The INPI can only state the non-use of the opposed trademark registration, but can not cancel a trademark registration for non-use (only French Courts can make the decision to cancel a trademark registration).

Opposition against designation of IR Mark
2 months from the publication of the WIPO Gazette
A trademark registration is valid for 10 years from the date of application. The registration is renewable for periods of 10 years. Electronic renewals are now possible since December 2013.
The renewal period is 6 months before the renewal deadline. The renewal application can be filed during the 6 months before the last day of the anniversary month (e.g. a mark filed on July 15, 2004 can be renewed from January 31, 2014 until July 31, 2014 included).
The grace period for renewals is 6 months starting from the 1st day of the month following the expiration date.

Further practical details are available in our publication on this topic here
If the trademark has not been used within 5 years preceding the action, it may be cancelled through a court order. The five-year period starts from the publication of the registration. Subsequent use of the trademark can restore protection if no party has requested cancellation due to non-use in the meantime.
The use for similar goods/services is not considered in course of a cancellation action. Only French courts can cancel a French national trademark registration. The Directive (European Union) 2015/2436 of December 16 2015 to approximate the laws of the Member States relating to trade marks provides that the Member States shall provide for administrative procedures before the national offices for the revocation or declaration of invalidity of a trade mark, without prejudice of the existing procedures before courts. The Member States have seven years to organize the administrative procedures.

Further practical details are available in our publication on this topic here
The official fee for a paper trademark application of up to three classes is EUR 250 and via e-filing EUR 210. The new official fee for each additional class is EUR 42.

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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here.
Search type First class Add. class
Word Mark Search (availability) 150,00 € 35,00 € 
Word Mark Search (identical) 60,00 € 0,00 € 

The Prices above are SMD Group Search Fees
Further practical details are available in our publication on this topic here
Country Index is a free service of SMD Group. We thank the following law firms for their assistance in updating the information provided.

Country Survey
09-19-2016
Ab Initio, Paris, France  

03-05-2015
Ab Initio, Paris, France  

01-20-2015
Inlex IP Expertise, Cannes, France  

09-12-2013
Ab Initio, Paris, France  

08-19-2013
Inlex IP Expertise, Cannes, France  

07-13-2012
Inlex IP Expertise, Paris, France  

02-16-2011
Baker & McKenzie, Paris, France



Ab Initio



Annick Pairault

Annick Pairault
5 rue Daunou
75002 Paris
France (FR)
Tel + 33 41 40 00 73
Fax + 33 42 66 02 10
info@abinitio.eu
www.abinitio.eu

Ab initio is a French boutique IP firm based in Paris, France.

We work with national and international clients in all aspects of Intellectual Property excepting patent matters. Ab initio can represent clients directly before the French Industrial Property Office (INPI) as well as before the Office for Harmonization in the Internal Market (OHIM), the WIPO and we work with a high quality network of IP specialists around the world. We namely deal with availability searches, filing, prosecution, opposition, watch services, recording issues and renewals. We also provide expert consultancy on trademarks, designs, author’s rights, domain names, unfair competition and all related matters. We handle oppositions and other administrative contentious matters and we assist our clients in negotiations.
In France, Industrial Property Attorneys (CPI) are not litigators, but we can refer our clients to several high quality IP Attorneys at Law.

Annick Pairault founded Ab initio in 2007. She started her professional career in 1986 and has worked as a French and European Trademark and Design Attorney since then in IP Firms. Annick is an active member (Advisor of the President and former Treasurer) of the APRAM (French association of Trademark law and Industrial design). She is also a member of the National Association of Industrial Property Attorneys (CNCPI), of the ECTA (European Community Trademark association) of INTA and of MARQUES. She has been regularly invited since 2002 as an instructor for the National Industrial Property Office IP education program.

Inlex IP Expertise



Franck Soutoul

Franck Soutoul
5, Rue Feydeau
75002 Paris
France (FR)
Tel +33 (0) 1 5659 7090
Fax +33 (0) 1 5659 7091
fsoutoul@inlex.com
www.inlex.com

INLEX IP Expertise is an Intellectual Property law firm specialized in the validation, protection, defense and valorization of projects for the creation of trademarks, designs, copyrights and commercial and marketing concepts.
Created in 1995 by Franck Soutoul and Eric Schahl, the firm employs 75 people and is now present in Europe - France (7 agencies), Monaco and Africa (3 agencies : Morocco, Cameroon & Mauritius).

Being registered representatives in France, Monaco, OAPI, the European Union (EUIPO) and in the World Intellectual Property Organization (WIPO) we are entitled to act at the international level and our network of the trusted experts enable us to carry out the following actions:
- Trademark availability searches
- Registration and renewal of trademarks, designs and domain names
- Monitoring of trademarks, designs, domain names, websites and references in search engines
- Opposition to the registration
- Administrative complaints
- Seizure procedures in infringement cases.

Institut National de la Propriété Industrielle
15, rue des Minimes
CS 50001
92400 Courbevoie
France
Tel +33 1 71 08 71 63
Fax +33 1 56 65 86 00
www.inpi.fr

European Union Intellectual Property Office (EUIPO)
Avenida de Europa, 4
03008 Alicante
Spain
Tel +34 965 139 100
Fax +34 965 131 344
Mail information@euipo.europa.eu
www.euipo.europa.eu


World Intellectual Property Organization (WIPO)
34, Chemin des Colombettes
1211 Geneva 20
Switzerland
Tel +41 22 33 89 11 1
Fax +41 22 73 35 42 8
www.wipo.int