FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
Moreover, the FTO does not respond to third- party observations, and does not necessarily take them into consideration when examining the trade mark application. 4.7 Revocation, Change, Amendment or Correction of an Application It is possible to revoke the application during the process of registration, partially or entirely (Arti - cle 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 opposi - tion (Article R.712-27 of the French Intellectual Property Code). The goods and services designated in the divid - ing application must necessarily be more restric - tive than those of the initial application. 4.9 Incorrect Information in an Application The consequences of providing incorrect infor - mation vary depending on the type of informa - tion 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 French Trademarks Office. However, if there is an error, for instance, in the information and/or
documents provided to support a priority claim, the consequences would be more severe as the priority claim could be permanently rejected. The French Trademarks Office often makes the decision on the consequences of the error. How - ever, occasionally a registration goes through and the error is later brought up 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 Property 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 appli - cant. If the registration is provisionally refused, the FTO sets a time limit for submitting observa - tions and/or providing 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 applicant’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.
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