FRANCE Law and Practice Contributed by: Vanessa Bouchara, Adèle Maier and Louise Lacroix, Cabinet Bouchara
6.2 Licensing Requirements or Restrictions It is strongly recommended to conclude licence agreements in writing, as mentioned. French case law may admit the existence of tacit licences under certain conditions. However, in order to ensure that such licences are not per - petual, the trade mark owner may, at any time, terminate the tacit licence and request the ces - sation of exploitation of the sign within a reason - able period of time. As regards exclusivity, licences can be exclusive, non-exclusive or similar to a sole licence if the licensor retains its own right to use the licensed trade mark. 6.3 Registration or Recording of an Assignment or Licence The recording of trade mark assignment or licence agreements at the FTO is not, in itself, compulsory for the assignment/licence to be valid. However, such recording is necessary and highly recommended especially because it is the only way for the licensee and/or assignee to enforce their rights against third parties. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Infringement proceedings are statute-barred within five years from the date of knowledge of the last infringing act. This is also reflected in case law, which has held that this five-year period runs from the last disputed action.
cant/owner knew about the use or rights of the plaintiff; or • when a mark has been applied for by the agent or representative of the owner of a mark, in their own name and without the owner’s authorisation, unless the agent or representative justifies their action (Article L.711-3 of the French Intellectual Property Code, III°). Procedures Before Courts Courts have exclusive jurisdiction for actions in revendication of a mark filed fraudulently. By such action, the plaintiff does not seek cancel - lation, but assignment – by the courts – of the fraudulent mark (Article L.712-6 of the French Intellectual Property Code). 6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions There are no specific procedures to assign a trade mark or copyright, and you can even assign the whole or part of a trade mark before it is actually registered. The relevant provisions are those of general contract law, arising from the French Civil Code. However, the assignment must be in writing to be valid. It must precisely identify the content of the assigned rights (assigned goods and ser - vices, duration, territory, promotional use, right to licence) and the assignment price. The FTO is not required to formally approve the assignment.
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