FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
which guarantees the function of identifying the origin of the goods, does not confer protection as such, but makes it possible to obtain registration of the trade mark that is not inherently distinctive, thus in principle
must identify the type of trade mark and the type of sign it seeks to register, and provide elements allowing to delimit the scope of the protection. The requirement for graphic representation has been abandoned with the introduction of the PACTE Law in 2020, which considerably expanded the list of catego - ries of signs that are eligible for trade mark protection. This list now includes word, figurative, shape, holo - gram, pattern, colour (single or combination), sound, motion, multimedia and position marks. Such catego - ries are listed by Declaration 2019-157 of the FTO’s Director. No proof of use or specimen of use is required to apply for a trade mark. The filing of a trade mark application requires the pay - ment of a fee to the FTO to be admissible (the fee var - ies depending on the number of designated classes and on whether the trade mark is extended to French Polynesia). Since the application can designate mul - tiple classes of goods and services, the more classes the application covers, the more expensive the appli - cation will be. 4.5 Use in Commerce Prior to Registration The French system does not require the applicant to use its mark in commerce before the registration. 4.6 Consideration of Prior Rights in Registration Unlike practices of some foreign offices, the FTO does not carry out an analysis of prior rights in its examina - tion of an application for registration. It only considers the regularity of the filing of the appli - cation (formal requirements), and the distinctiveness of the sign (Article L.711-2 of the French Intellectual Property Code). The FTO is becoming increasingly stricter on assessing distinctiveness of the sign. However, third parties have the right to participate by filing observations before the FTO within two months of the publication of the trade mark application. Such observations may particularly relate to the lack of dis - tinctiveness of the trade mark application.
not inherently registrable. 4.2 Trade Mark Register
The National Trade Mark Register, which is adminis - tered by the French Trade Mark Office (FTO), gathers all French trade marks. Each new event related to a trade mark (eg, appli - cation, refusal, registration, limitation, assignment, licence, cancellation) is published in a Bulletin (BOPI) which is then incorporated into the National Trade Mark Register. The FTO also maintains an online database of the trade mark rights that have effect in France and French Polynesia. It is highly recommended to conduct an availability search before applying to register a mark. 4.3 Term of Registration French trade marks, as well as EU trade marks, are initially registered for a period of ten years, and this registration can be indefinitely renewed for subse - quent ten-year periods. Article R712-24 of the French Intellectual Property Code provides that French trade marks are renew - able within the last six months of the ten-year period. More precisely, the renewal can be filed until the last day of the month of the trade mark filing. After this term, French trade marks can still be subject to a late renewal for an additional “grace period” of six months after the term, subject to payment of an additional fee. After this additional period lapses, the trade mark can no longer be renewed and will defini - tively expire if it has not been renewed in due time. 4.4 Application Requirements The application to register a trade mark can be filed online on the FTO’s website. Any natural or legal per - son can file an application in their name and the appli - cant will not need to prove their identity. The applicant
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