Foley Hoag was recently delighted to announce the arrival of two IP attorneys to our Paris office, Catherine Muyl and Alice Berendes. We asked them to tell us a few things we may not know about trademarks in France. Here they are:
On the French territory, two types of marks coexist: French trademarks issued by the French Trademark Office (INPI), that are valid on the French territory only, and Community trademarks issued by the Community Trademark Office which is part of the OHIM ("Office for Harmonization in the Internal Market") that are valid throughout the European Union, including the French territory. Each type of mark is governed by its own set of rules: the French Intellectual Property Code on the one hand and EU Regulation No. 07/2009 of 26 February 2009 on the other. In practice, however, the rules that apply to national marks and Community marks are very similar.
1. No Common Law Trademarks
There is no such thing as a common law trademark in France. Unlike the U.S. trademark system, within which trademark rights may exist on trademarks that are not registered, under French and EU law, trademarks are protected only upon registration with the Trademark Office. Except in very specific and limited cases, the mere use of a trademark does not create rights.
2. No Prior Rights Search By Examiners
The French and Community Trademark Offices do not carry out a prior rights search. They can only refuse to register trademarks where the trademark in question:
- is not sufficiently distinctive (e.g., " Bateaux Mouches," the term used for excursion boats on the Seine);
- contains a word likely to mislead the consumer as to the nature or characteristics of the products or services (e.g., "fruity Evian" for syrups which do not contain fruits);
- reproduces a protected emblem (e.g., a mark including the logo of the Olympic rings); or
- contains words that are contrary to public policy (e.g., the "I am Charlie" slogan) or accepted principles of morality (e.g., the words " Puta Madre" for clothing).
The French and the Community Offices also do not check whether the trademark application infringes prior rights. However, third parties can invoke their prior rights at two different stages:
- Before registration of the trademark application. Third parties are granted 2 months after publication of French trademark applications (3 months after publication of Community trademark applications) to oppose a registration on the basis of their prior trademark. The opponent can argue either that the signs and products and services in question are identical or that the signs and/or the products and services in question are similar. In the latter case, the opponent has to demonstrate that there is a likelihood of confusion, i.e. that there is a risk that the public might believe that the goods and services in question come from the same undertaking or from economically linked undertakings.
- After registration of the trademark . Once a trademark is registered, third parties can at any time claim the revocation of said trademark on the basis of various prior rights such as a prior trademark, corporate name, copyright, trade name or right to a name. However, where the trademark owner has acquiesced, for a period of five successive years, in the use of a later trademark while being aware of such use, it will be barred from seeking revocation of the later trademark in respect to the goods or services for which the later trademark has been used.
3. The Genuine Use Requirement
Unlike in the U.S., the use of the trademark is not a prerequisite for the registration of a trademark and for maintaining its validity during the first few years following its registration. However, the trademark may be revoked for lack of use by the District Court, at the request of any party with an interest, if the trademark owner cannot prove genuine use for the goods or services for which the mark is registered within a period of five years following registration.
4. Infringer's Good Faith Generally Not Considered
In France, trademark infringements constitute both a civil tort and a criminal offence. Therefore, trademark infringement lawsuits may be examined by Criminal or Civil Courts. Most of the time, the trademark owner chooses the civil route. The main difference is that good faith is a valid defense before a criminal court but it is no defense before a civil court.
There is no discovery before French Courts to assist plaintiff to make its case. However, infringement seizure ("saisie-contrefaçon") can constitute a powerful tool for gathering evidence of infringement prior to launching proceedings on the merits. It allows the trademark owner, through ex-parte proceedings, to be authorized by a judge to have a bailiff enter at any time into the infringer's premises – without prior notice – in order to find evidence of the infringement. The bailiff writes a report detailing the infringing products. The bailiff can also buy samples and take pictures and copies of all relevant documents such as orders and invoices. The bailiff's report is used to prove the existence of the infringement and its extent. Thus, the number of infringing products is often the basis on which damages are calculated.
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