Foley Hoag was recently delighted to announce the arrival of two IP attorneys to our Paris office, Catherine Muyl and Alice Berendes. We asked them to tell us a few things we may not know about trademarks in France. Here they are:
On the French territory, two types of marks coexist: French trademarks issued by the French Trademark Office (INPI), that are valid on the French territory only, and Community trademarks issued by the Community Trademark Office which is part of the OHIM ("Office for Harmonization in the Internal Market") that are valid throughout the European Union, including the French territory. Each type of mark is governed by its own set of rules: the French Intellectual Property Code on the one hand and EU Regulation No. 07/2009 of 26 February 2009 on the other. In practice, however, the rules that apply to national marks and Community marks are very similar.
No Common Law Trademarks
There is no such thing as a common law trademark in France. Unlike the U.S. trademark system, within which trademark rights may exist on trademarks that are not registered, under French and EU law, trademarks are protected only upon registration with the Trademark Office. Except in very specific and limited cases, the mere use of a trademark does not create rights.
No Prior Rights Search By Examiners
The French and Community Trademark Offices do not carry out a prior rights search. They can only refuse to register trademarks where the trademark in question:
is not sufficiently distinctive (e.g., " Bateaux Mouches," the term used for excursion boats on the Seine); contains a word likely to mislead the consumer as to the nature or characteristics of the products or services (e.g., "fruity Evian" for syrups which do not contain fruits); reproduces a protected emblem (e.g., a mark including the logo of the Olympic rings); or contains words that are contrary to public policy (e.g., the "I am Charlie" slogan) or accepted principles of morality (e.g., the words " Puta Madre" for clothing). The French and the Community Offices also do not check whether the trademark application infringes prior rights. However, third parties can invoke their prior rights at two different stages:
Before registration of the trademark application. Third parties are granted 2 months after publication of French trademark applications (3 months after publication of Community trademark applications) to oppose a registration on the basis of their prior trademark. The opponent can argue...