FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
The filing of observations does not open any adver - sarial proceeding, thus the trade mark applicant is not given the chance to respond. Moreover, the FTO does not respond to third-party observations, and does not necessarily take them into consideration when exam - ining the trade mark application. 4.7 Revocation, Change, Amendment or Correction of an Application It is possible to revoke the application during the pro - cess of registration, partially or entirely (Article R.712- 21 of the French Intellectual Property Code). It is also possible to amend the list of goods and services, provided the amended list covers an equal scope or a restricted scope of protection compared to the initial list. Under no circumstances will the applicant be able to extend protection beyond what has been covered at the time of filing, either for goods and services or for signs. 4.8 Dividing a Trade Mark Application It is possible to divide a trade mark application in order to overcome a partial refusal or an opposition (Article R.712-27 of the French Intellectual Property Code). The goods and services designated in the divisional application must necessarily be more restrictive than those of the initial application. 4.9 Incorrect Information in an Application The consequences of providing incorrect informa - tion vary depending on the type of information that is incorrect. For instance, if there is a material error in the address of the trade mark owner, this can easily be corrected at any time by filing a request to rectify a material error before the FTO. However, if there is an error, for instance, in the information and/or docu - ments provided to support a priority claim, the con - sequences would be more severe as the priority claim could be permanently rejected. The FTO often determines the consequences of the error. However, occasionally a registration goes through and the error is later raised in court during a legal action for infringement, in which case the court
would assess the error and its effect on the validity of the trade mark. 4.10 Refusal of Registration The registration of a trade mark can be refused by the FTO based on different absolute grounds of refusal, listed in Article L.711-2 of the French Intellectual Prop - erty Code: • lack of inherent distinctiveness; • misleading character; • offence against public policy or morality; • the sign is an emblem, national flag or any other intergovernmental sign according to Article 6 of the Paris Convention; and • the sign was filed in bad faith by the applicant. If the registration is provisionally refused, the FTO sets a time limit for submitting observations and/or provid - ing additional evidence (eg, if distinctiveness can be proven by use). However, it should be mentioned that the Office rarely reverses its initial refusal decision, and is becoming increasingly strict in assessing the distinctiveness of the signs. Should the FTO, after examining the appli - cant’s observations, uphold its refusal decision, the applicant may appeal the final decision of the FTO before the competent Court of Appeal within one month of the final refusal decision. 4.11 The Madrid System France has participated in the Madrid system since 1997. 5. Trade Mark Procedure for Inter Partes Proceedings 5.1 Timeframes for Filing an Opposition or Cancellation Before registration, third parties may file an opposition against a trade mark application within two months after publication of the application. There is no system of request for an extension of the time limit to file an opposition in France and no cool - ing-off period.
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