Dec 15, 2022 (Newsletter Issue 18/22)
E-Portal for Trademark Procedures at INPI
The French National Institute of Industrial Property (INPI) announced that, as of 11 October 2022, the electronic trademark portal is the sole access point for conducting some procedures related to trademarks. These procedures include the filing, opposition, invalidity, forfeiture, and division of trademarks.
This new interface offers the following advantages:
- Easy online entries with a guided mode for occasional depositors (referral to the most frequent filing methods, information on the criteria for validating the mark)
- Follow-ups real-time procedural steps
- New filters by type of procedure (filing, opposition, nullity, forfeiture, division)
- Facilitated seizures concerning the contested mark and the earlier mark in opposition and invalidity proceedings
The new functionalities will soon extend to registrations in the register and applications for international trademarks, as well as renewals and official copies.
Source: www.inpi.fr
Feb 11, 2021 (Newsletter Issue 3/21)
Ratification to Geneva Act of Lisbon Agreement on Appellations of Origin and GI
On January 21, 2021, the WIPO notified the deposit by the Government of the French Republic of its instrument of ratification of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement), adopted at Geneva on May 20, 2015.
The Geneva Act of the Lisbon Agreement will enter into force, with respect to the French Republic, on April 21, 2021.
Source: www.wipo.int
Nov 05, 2020 (Newsletter Issue 18/20)IP Office to Commence Operations as Depositing Office of WIPO DAS SoonThe French National Institute of Industrial Property (INPI) notified WIPO in accordance with paragraphs 10 and 12 of the Framework Provisions for the WIPO Digital Access Service (DAS) that INPI would commence operation as a depositing Office of WIPO DAS with effect from December 1, 2020.
Technical and operational options adopted by INPI are:
- INPI as a depositing Office will deposit certified copies of patent and utility model applications as priority documents, including PCT applications filed at their Office on and after December 1, 2020, which the applicant specifically requests be made available to the service.
- All documents and information will be exchanged in greyscale or color and in PDF format through the WIPO DAS Office web portal and based on WIPO PCT-EDI.
For more information, please click hereSource: www.wipo.int Mar 05, 2020 (Newsletter Issue 3/20)
Changes to Trademark Law
The French Trademark Law has been changed by the Ordinance n°2019-1169 dated November 13, 2019 and Decree No. 2019-1316 dated December 9, 2019, transposing into national law the provisions of the EU Directive No. 2015/2436.
The new French Trade Mark Provisions bring major changes, concerning trademark filing, opposition, registration and renewal procedures and changes to the fee. They entered into force on December 11, 2019.
Important changes are the following:
- Requirement of graphical representation of trademarks abandoned:
Signs such as sound, motion, multimedia marks or holograms are now registrable.
- Revised filing fees:
A fee-per-class system has been introduced, which replaces the flat-rate system for the first three classes.
- Distinguishing between certification and collective marks:
Clarification of status of a collective mark provided
- Procedure for renewing French trademarks amended:
A French trademark can now be renewed within one year before its expiry date (previously 6 months). No longer can a trademark application be combined with a renewal of a trademark. Renewal fees have been increased.
- Opposition procedure changed:
Prior rights in support of an opposition gave been extended. In addition to prior trademarks it is now possible to also include the name of public entities, company names, trade names, Business names, signs, domain name whose scope is not only local.
A single opposition can now be based on several prior rights, that belong to the same holder.
Further, a new procedural timetable of opposition has been introduced. A simple online form must be completed within one month with arguments and evidence in support to start an opposition proceeding with the French National Institute for Industrial Property (INPI).
Also, genuine use of the earlier trademark subject to the obligation to use is now checked by the INPI for each of the goods or services on which the opposition is based.
On April 1, 2020, a new administrative procedures for the invalidity and revocation of trademarks will come into force. Jurisdiction to hear actions for the invalidity or revocation of a trademark will be transferred exclusively to INPI. Further, appeals to the Court of Appeals against INPI decisions will be simplified and harmonised.
Source: www.inpi.fr; www.fieldfisher.com; www.nortonrosefulbright.com
Apr 24, 2019IP Office Will Not Accept Division or Merger Requests of Intl. RegistrationFrance has notified WIPO in accordance with new Rules 27bis(6) and 27ter(2)(b) of the Common Regulations, which entered into force on February 1, 2019.
Accordingly, new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations do not apply. As a result, the IP Office will not present WIPO requests for the division of an international registration under new Rule 27bis(1) nor requests for the merger of international registrations resulting from division under new Rule 27ter(2)(a).
For further information, please refer to hereSource: www.wipo.int Sep 20, 2018 (Newsletter Issue 16/18)Law on the Protection of Trade Secrets AdoptedThe Law on the Protection of Trade Secrets has now been adopted by the National Assembly (Assemblée Nationale) and the Senate (Sénat) on June 14 and 21, 2018, to implementing the EU Directive 2016/493.
To ensure that the law complies with the French constitution, it has been validated by the Constitutional Council (Conseil constitutionnel) on July 26, 2008.
The law introduces a harmonised definition of trade secrets and a set of protective rules of a civil nature into the French Commercial Code (the "Commercial Code"), with several exceptions (Articles L. 151 – 1 to L. 154 – 1 of the Commercial Code).
For more information, please click hereSource: www.whitecase.com Nov 07, 2017 (Newsletter Issue 19/17)
Filing of Trademark / Design Applications Electronically Only
The French National Trademark Office (INPI) informed on its website that filing of a trademark and design can be done only electronically via the website 'www.inpi.fr' as of October 16, 2017.
As of November 2, 2017, procedural exchanges, withdrawal declarations and requests for correction of material errors can only be filed online.
Source: www.inpi.fr
Jun 14, 2016 (Newsletter Issue 11/16)Submission of Trademark Opposition via E-Service RequiredAs 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 May 02, 2016 (Newsletter Issue 8/16)Scope of IR Protection on French Overseas TerritoriesWIPO 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 Jul 14, 2015 (Newsletter Issue 11/15)Official Fees Increased/New Rules on DeadlinesThe 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
Mar 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
Jul 08, 2014 (Newsletter Issue 11/14)Practice Change to French PolynesiaA 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 Jul 04, 2014 (Newsletter Issue 11/14)Regional INPI Offices No Longer Entitled to Receive FilingsSince 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 Feb 04, 2014 (Newsletter Issue 2/14)Change of Opposition Procedure AwaitedOppositions 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 Sep 17, 2013 (Newsletter Issue 13/13)Local Trademark Regulation in French PolynesiaFrench 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 Sep 17, 2013 (Newsletter Issue 13/13)Ongoing Reform in New CaledoniaAfter 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 Nov 19, 2012 (Newsletter Issue 17/12)Change of Address of Patent OfficeThe 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) on trademarks and service marks, last amended on December 11, 2019, 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.
The provisions of Directive 2015/2436 (European Union) of December 16, 2015, were implemented in France on November 13, 2019 (French Ordinance No. 2019-1169). It entered into force after the publication of the Decree, harmonising it with EU law.
French trademarks give protection in Corsica and in the following French overseas departments: French Guyana (GF), Guadeloupe (GP), Martinique (MQ), Mayotte (YT) and Réunion (RE). It also provides protection in the French overseas collectivities: New Caledonia (NC), Saint-Barthelemy (BL) and the French part of Saint-Martin (MF), St. Pierre and Miquelon (PM), Wallis and Futuna (WF) as well as the French Southern and Antarctic Lands (TF). National French trademark registrations do not extend to French Polynesia (FP).
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, 12th edition
Registrable as a trademark are signs used to distinguish the goods or services of a legal person. These may be words, names, acronyms, letters, numbers, devices, emblems, geographical names, holograms, colours, colour combinations, sounds, graphic animations, dispositions of colours, the three-dimensional form of a good or its packaging and any combination of the mentioned signs.
The following trademark types are registrable: trademarks for goods and services, collective marks and guarantee marks.
The application is filed at the National Institute of Industrial Property (INPI).
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 (Avocat in French).
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 published a second time.
National:The opposition period is 2 months after publication of the trademark application.
A formal notice of opposition needs to be filed electronically through a platform accessible on the Office website. All correspondences and documents need to be filed electronically as well. The opposition procedure starts with an online form, which must then be completed within one month with the arguments and evidence in support. A single opposition can be based on several prior rights, provided they belong to the same holder. Since December 11, 2019, prior rights in support of an opposition have been extended to include the name of a public entity, a company name, a trade name, a business name, a sign, or a domain name whose scope is not only local.
Once the examination of the admissibility of the opposition by the INPI is completed, a six-month instruction period is provided. The trademark applicant has two months to formulate his reply and formally request proof of use, if this is justified in the view of the seniority of the trademark cited by the opponent in the opposition proceedings. Thereafter, the opponent and the applicant each have the opportunity to submit up to two supplementary observations. If the INPI does not take a decision within a period of three months after the end of the investigation phase, which will be communicated to the parties by the INPI, the opposition will be deemed to be rejected.
When filing the opposition, a fee shall be paid for the first prior right and for each additional right invoked. An 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 may be suspended for a period of three months at the joint request of the parties. Only two suspensions can be granted (suspension of six months maximum). Three rounds of observations between the parties are possible within six months. The applicant may request proof of use of the opposed trademark which is subject to the requirement of use.
The proprietor of the prior trademark registered for more than five years will have to demonstrate, upon request of the trademark applicant, that his prior trademark is being used, or has been used over the last five years for each good or service invoked against the trademark application.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
A trademark registration is valid for 10 years from the filing date and can be renewed an unlimited number of times for another 10 years.
The renewal period is 12 months before the expiry date. The INPI must inform the trademark owner of the expiry of the registration at least 6 months before the expiry date.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for e-filing a trademark application is EUR 190 for the first class and EUR 40 for each additional class.
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More in-depth details are available for the following aspects:
General Trademark Regulations
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Jan 30, 2023
INLEX IP Expertise, Paris, France