FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
• exclusively composed of the shape of the desig - nated goods or other characteristics of the prod - uct that are dictated by the nature of the product, necessary to obtain a technical result, or bestow substantial value on the product; • contrary to public order or illegal; • protected by an appellation of origin, geographical indication, or plant variety; • misleading or deceiving for the public; or • filed in bad faith. The applicant may demonstrate before the FTO acquired distinctiveness through intensive use. This requires substantial evidence showcasing the mark’s intensive use, establishing its function in identifying the goods’ origin. It is highly advisable to include sur - veys as part of the evidence to demonstrate consumer recognition and association with the mark. 2.3 Trade Mark Rights Registration of a trade mark grants the owner own - ership of the trade mark for the goods or services designated throughout the term of the mark. Article L713-2 of the French Intellectual Property Code pro - vides that the use of a sign in the course of trade shall be prohibited unless authorised by the proprietor of the prior trade mark: • if it is identical to the prior trade mark and used for goods or services identical to those for which the trade mark is registered; or • if it is identical or similar to the trade mark and used for goods or services identical or similar to those for which the trade mark is registered, if there exists, in the mind of the public, a likelihood of confusion with the prior trade mark. 2.4 Use in Commerce The French system does not require the applicant to use its mark in commerce before registration. How - ever, revocation proceedings on the grounds of lack of genuine use can be filed by third parties as early as five years after the registration date. If the case arises, the use must be established: • for the sign covered by the trade mark registration (the use of a slightly different sign is admitted to
prove genuine use, as long as it does not signifi - cantly alter the distinctiveness of the trade mark); • within the territory of registration; • within the relevant period of five years preceding the filing of the action; • in relation to all the covered (or contested if the revocation action only targets part of the trade mark registration) goods and services; • as a trade mark and not in a merely descriptive way; and • with an intensity that reflects genuine use in the course of trade (with regards to the category of the contested goods or services) and not a symbolic use that would be conducted in order to maintain the trade mark. The proprietor is invited to submit invoices, press clip - pings, affidavits, brochures, catalogues, correspond - ence with vendors, or any other relevant dated docu - ment. 2.5 Notices and Symbols The use of symbols, such as TM or ®, which are derived from the US system, is completely optional in France. Their use has no legal bearing on whether the trade mark owner’s rights can be subject to opposi - tion, as the Paris Convention clearly states. 2.6 Related Rights A trade mark can also be protected by copyright in the case of logos, for example, but also in the case of slogans or trade marks that may constitute the title of a book or the name of a fictional character, provided that the sign meets the requirement of “originality” imposed by French copyright law. Opposition and invalidity claims against a trade mark can be based on prior copyrights. Where a trade mark consists of a surname, it is not subject to a distinct rule. However, its validity is upheld as long as it does not cause prejudice to an individual bearing the same surname. To initiate the revocation of the trade mark, the affect - ed party would have to prove that the trade mark is identical or highly similar to their name, that it cre - ates an association in the public’s mind between the trade mark and the individual, and that this causes
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