FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
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 advis - able to include surveys as part of the evidence to demonstrate consumer recognition and associa - tion with the mark. 2.3 Trade Mark Rights Registration of a trade mark grants the owner ownership 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 provides 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 appli - cant to use its mark in commerce before reg - istration. However, 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. The use must be established: • within the territory of registration; • within the relevant period of five years pre - ceding the filing of the action;
• in relation to all contested goods and ser - vices; • as a trade mark and not in a merely descrip - tive way; and • with an intensity that reflects genuine use in the course of trade (with regards to the cat - egory 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 clippings, affidavits, brochures, catalogues, cor - respondence with vendors, or any other relevant dated document. 2.5 Notices and Symbols The use of symbols, such as ®, which are derived from the US system, is completely optional in France. Their use has no bearing on whether the trade mark owner’s rights can be subject to opposition, as the Paris Convention clearly states. 2.6 Related Rights A trade mark can also be protected by copy - right 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 affected party would have to prove that the trade mark is identical or highly similar to their name,
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