Trademarks in France 2024

Trademarks in France 2024

TRADEMARKS 2024

FRANCE

Sarah Bailey, Frédérique Potin, Hélène Choquet, Sabine Borny, Guillaume Tran

(Simmons & Simmons)

LEGAL FRAMEWORK

Domestic law

  1. What is the primary legislation governing trademarks in your jurisdiction?

The primary piece of legislation governing trademarks in France is Law No. 91-7 of 4 January 1991, as amended by Ordinance No. 2019-1169 of 13 November 2019 and the corresponding Decree No. 2019-1316 of 9 December 2019, which transposed the European trademark package into French law. This is incorporated into the Intellectual Property Code.

International law

  1. Which international trademark agreements has your jurisdiction signed?

France has signed the Paris Convention for the Protection of Industrial Property 1883 and the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994. France has been a party to the Madrid Agreement since 1892 and the Madrid Protocol since 1997. France has also signed:

  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957;
  • the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks 1973;
  • the Trademark Law Treaty 1994; and
  • the Singapore Treaty on the Law of Trademarks 2006, which standardizes and streamlines national and regional trademark registration procedures.

Regulators

  1. Which government bodies regulate trademark law?

The National Institute of Industrial Property is the government agency responsible for administering the French trademark system. It handles trademark registrations, oppositions and cancellation actions.

REGISTRATION AND USE

Ownership of marks

  1. Who may apply for registration?

Any natural or legal person can apply for a trademark registration, subject to a requirement of reciprocity that will be relevant if the applicant is neither domiciled nor established in a member state of the World Trade Organization or the Paris Union, established by the Paris Convention for the Protection of Industrial Property 1883 (article R712-3 of the Intellectual Property Code).

Scope of trademark

  1. What may and may not be protected and registered as a trademark?

A sign may be protected as a trademark if:

  • it is capable of distinguishing the goods and services of one undertaking from those of other undertakings; and
  • it can be represented in the Registry in a manner that enables third parties to determine precisely and clearly the sign for which protection is granted (article L711-1 of the Intellectual Property Code).

The French trademark system does not make a distinction between trade and service marks. Traditionally, registrable signs include words, letters, numerals, designs, images, colors or combinations of colors, sounds, and three-dimensional shapes including packaging. It is also possible to register position marks and pattern marks. As of 2019, non-traditional trademarks (i.e, motion marks, sound marks presented in the form of a digital file, holograms and multimedia marks) can also be registered provided that they are represented in a way that permits third parties to understand their scope of protection. Articles L715-6 and L715-1 of the Intellectual Property Code allow for the registration of collective and certification trademarks, subject to compliance with certain additional requirements.

The French trademark system does not recognize common law trademarks.

Unregistered trademarks

  1. Can trademark rights be established without registration?

Unregistered trademarks are not recognized by French trademark law and will not benefit from trademark protection. However, the owner of a well-known mark, as defined by article 6-bis of the Paris Convention for the Protection of Industrial Property 1883, can rely on the provisions of French tort law to prevent the use of a sign that is identical or similar to its own well-known mark when it is used for the same or similar goods or services, or for dissimilar goods or services if the use takes unfair advantage or is detrimental to, the distinctive character or the repute of the mark (article L713-5 of the Intellectual Property Code).

Famous foreign trademarks

  1. Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Famous foreign trademarks are not afforded protection per se in France unless they are used widely and are well known to the French public. If they meet these two conditions, it should be possible to obtain protection from unauthorized use of the same or similar signs under the French doctrine of unfair competition, which is part of French tort law.

The benefits of registration

  1. What are the benefits of registration?

The registration of a trademark enables its owner to benefit from a presumption that the trademark is valid. Being able to rely on a registered trademark also means that, in the event of infringement, the trademark owner will be entitled to access specialized courts. The owner will also be entitled to specific remedies and damages provided by the Intellectual Property Code.

It is simpler to file opposition and cancellation proceedings based on a registered trademark than on an unregistered sign. Border enforcement mechanisms are available to block the import of unauthorized goods.

Filing procedure and documentation

  1. What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

French trademark applications are made electronically via the Registry’s online portal.

Legal entities are not required to file a certificate of good standing. Provided that the application is filed by the applicant or its trademark lawyer, there is no requirement for a power of attorney.

If the applicant is neither domiciled nor established in the European Union or the European Economic Area, it must appoint an authorized representative in the European Union (article R712-2 of the Intellectual Property Code). If the applicant is neither domiciled nor established in a member state of the World Trade Organization or the Paris Union, it must provide evidence that it has filed the trademark in its country of domicile or establishment and that such a country grants reciprocal protection to French trademarks (article R712-3 of the Intellectual Property Code).

The mark may be represented in any appropriate form using generally available technology, provided that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective (article R712-1 of the Intellectual Property Code). Rules governing the representation of the mark are detailed in Decision No. 2019-157 of 11 December 2019, issued by the Registry. For instance, a word mark must be represented in a standard font and a sound mark must be represented through an audio file or a musical notation.

Although not mandatory, it is recommended to conduct trademark availability searches before applying for registration. The Registry’s online database enables applicants to identify identical prior registrations without incurring any costs. However, it is good practice to conduct full availability searches that also cover similar signs before filing a new application.

Registration time frame and cost

  1. How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

The Registry must rule on a trademark application within six months. This time frame is extended if the application is subject to a provisional refusal or third-party oppositions (article R712-23-1 of the Intellectual Property Code). The application is published for opposition purposes within six weeks of filing and third parties have two months to oppose the application. Once the registration procedure is complete, the trademark will be published in the trademark gazette and will be deemed effective from the date of filing.

The official fee for filing a French trademark application in one class is €190, with a further official fee of €40 per additional class. It is also possible to extend protection to French Polynesia for an additional official fee of €60.

Classification system

  1. What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

France is a signatory of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks 1957, so the Registry applies the classification described therein. Multi-class applications are available and cost-efficient because the official fee for filing a French trademark application in one class is €190, with an additional fee of €40 per additional class.

Examination procedure

  1. What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Registry checks that the application meets its requirements regarding form and validity (e.g, distinctiveness, deceptiveness, prohibited signs) under articles R712-7 et seq and L712-7 of the Intellectual Property Code. It does not examine whether the application is likely to infringe any third parties’ prior rights. Therefore, there is no need for letters of consent. If the Registry finds that the application does not meet the registrability requirements, it issues a formal notification, granting the applicant a deadline to reply. If the grounds for refusal cannot be remedied, the registration is rejected either in its entirety or in part depending on the nature of the objection. This is set forth in the National Institute of Industrial Property’s registration procedure.

Use of a trademark and registration

  1. Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

There is no requirement to claim that a trademark is already in use to obtain trademark registration in France. However, a trademark registration will become vulnerable to a third-party non-use cancellation action if it has not been put to genuine use over a continuous five-year period.

The French trademark system recognizes the right of priority provided for in article 4 of the Paris Convention for the Protection of Industrial Property 1883. Foreign registrations may therefore benefit from priority in France.

Markings

  1. What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

Trademark marking is not mandatory in France. The ‘TM’ and ‘®’ symbols are nevertheless generally understood by the French public and can be used by trademark owners to identify that their sign is a trademark. Use of these symbols for unregistered marks can constitute a misleading commercial practice.

Appealing a denied application

  1. Is there an appeal process if the application is denied?

If the Registry refuses the application, the applicant is entitled to appeal the decision to the relevant court of appeal within one month of receipt of the notification of refusal. This period is extended for applicants outside metropolitan France. The court of appeal reviews only the arguments and evidence presented by the parties in front of the Registry. The decision of the court of appeal can be appealed on a point of law (by the applicant or the Registry) to the Supreme Court.

Third-party opposition

  1. Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

French trademark applications are published for opposition purposes. Publication opens a two-month period for third parties to file a notice of opposition. Oppositions are filed electronically and can be based on one or more of the following prior rights:

  • a French, EU or international trademark registration designating France or the European Union;
  • a mark with a reputation;
  • a corporate or company name;
  • a domain name;
  • a geographical indication;
  • the name, image or reputation of a city; or
  • the name of a state organization.

The opponent then has one month to file its arguments and evidence in support. The procedure can include up to three exchanges of arguments and evidence between the parties and a hearing, although these tend to be rare. The Registry must issue its decision within three months of the end of the written procedure or the hearing, if one has been held. At the end of the opposition procedure, which can last for up to 10 months, the Registry decides either to uphold the application or to reject it (partially or totally).

The official fee for an opposition based on one prior right is €400 with an additional fee of €150 per additional prior right relied upon (articles L712-4 et seq and R712-13 et seq of the Intellectual Property Code and the National Institute of Intellectual Property’s opposition procedure).

A trademark may be canceled after registration by filing a cancellation action with the Registry, based either on absolute grounds (e.g, lack of distinctiveness, descriptiveness, deceptiveness, bad faith) or the claimant’s prior rights. The procedure is very similar to the opposition procedure described above, with up to three rounds of submissions exchanged electronically.

At the end of the cancellation proceedings, which can last for up to nine months, the Registry either upholds the mark or invalidates it (partially or totally). The official fee for filing a cancellation action is €600, with an additional fee of €150 per additional prior right relied upon. Non-use cancellation actions and actions based on the mark having become generic are also heard by the Registry, and the procedure and costs are substantially the same as for a cancellation action (articles L716-1 et seq and R716-1 et seq of the Intellectual Property Code, and the nullity and revocation procedure).

French courts retain jurisdiction to hear trademark cancellation actions based on a prior copyright, design and model right or personality right. These actions are longer and more expensive than proceedings before the Registry.

Foreign brand owners that do not own a valid French trademark are not entitled to oppose an application filed in bad faith in France, but may seek cancellation of the mark in court proceedings once registered.

Duration and maintenance of registration

  1. How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

A trademark registration remains in effect for 10 years from the application date. It can be renewed indefinitely for subsequent periods of 10 years, subject to filing a renewal form and paying the official fee (article L712-1 of the Intellectual Property Code). Late renewal is permitted for a period of six months following the initial renewal deadline, subject to paying a surcharge. Use of the mark is not a prerequisite for renewal and, consequently, there is no requirement to provide evidence of use.

Surrender

  1. What is the procedure for surrendering a trademark registration?

A trademark application or registration may be surrendered for all or some of the goods and services covered by the mark at any time (article L714-2 of the Intellectual Property Code) by filing a withdrawal request with the Registry. If the surrendered trademark is subject to a license, pledge or co-ownership, the licensee, pledgee or co-owner must also consent. The surrender of a trademark application is free of charge. Surrender of a registered trademark is subject to an official fee of €27 per mark, with a maximum charge of €270 for 10 or more marks. The request can be processed on an expedited basis for an additional fee of €52 per mark.

Related IP rights

  1. Can trademarks be protected under other IP rights?

Trademarks may be protected by copyright or registered and unregistered designs provided that they meet the specific validity requirements for the relevant rights. In addition, French unfair competition law can be relied upon to protect trademark owners from unfair commercial practices.

Trademarks online and domain names

  1. What regime governs the protection of trademarks online and domain names?

The Electronic Post and Telecommunications Code entitles the owner of a trademark to request the cancellation or transfer of a domain name that infringes its prior rights. In addition, the reservation and use of a domain name may, under certain circumstances, constitute trademark infringement. In this respect, the protection of trademarks online is similar to any other use of a trademark, subject to the limited liability regime enjoyed by providers of hosting services.

A domain name can constitute a prior right to a subsequent trademark application and can be relied upon in opposition proceedings if it enjoys a certain level of recognition with the public (articles L711-3 and L712-4 of the Intellectual Property Code).

LICENSING AND ASSIGNMENT

Licenses

  1. May a license be recorded against a mark in the jurisdiction? How? Are there any benefits to doing so or detriments to not doing so? What provisions are typically included in a licensing agreement?

A license may be recorded with the Registry by the licensor or the licensee by completing an online form and uploading a copy of the agreement (with a French translation, if necessary) on the Registry’s online portal. Official fees are €27 per trademark, with a maximum charge of €270 for 10 or more marks. The recordal can be processed on an expedited basis for an additional fee of €52 per mark.

Recording the license will assist the licensor in demonstrating use of the relevant trademark, and will enable the exclusive licensee to bring infringement proceedings in its own name if the license does not prohibit it and the licensor fails to do so.

The following provisions are typically included in license agreements:

  • preamble;
  • licensed right (e.g, mark, products or services);
  • territory;
  • use;
  • duration;
  • exclusivity or non-exclusivity;
  • royalties;
  • rights and obligations;
  • quality control clause, including brand guidelines;
  • infringement;
  • warranties and indemnities;
  • liability;
  • confidentiality;
  • termination clause, including change of control;
  • right to assign;
  • governing law clause;
  • dispute resolution clause; and
  • other standard boilerplate provisions.

Assignment

  1. What can be assigned?

A trademark application or registration can be assigned for either all or part of the goods or services it covers (article L714-1 of the Intellectual Property Code). French law does not recognize the concept of goodwill as such but, for tax purposes, it distinguishes whether there is a clientele attached to the mark or not. When the trademark constitutes a business asset, it can be assigned either with the business or independently. The choice will have tax consequences.

Assignment documentation

  1. What documents are required for assignment and what form must they take? What procedures apply?

A trademark assignment must be evidenced in writing and signed by the assignor and assignee. There is no requirement for notarization or legalization. However, it is important to identify the trademark to be assigned, the purchase price and the applicable tax regime. Where the trademark assignment takes the form of a gift, the agreement must be signed before a notary public and there may also be tax consequences.

The assignment can be recorded with the Registry by completing an online form and uploading a copy of the agreement (with a French translation, if necessary) on the Registry’s online portal. Official fees are €27 per trademark, with a maximum charge of €270 for 10 or more marks. The recordal can be processed on an expedited basis for an additional fee of €52 per mark.

Validity of assignment

  1. Must the assignment be recorded for purposes of its validity?

The assignment does not need to be recorded for the purposes of its validity. However, the assignment will only be binding against third parties once it has been recorded with the Registry.

Security interests

  1. Are security interests recognized and what form must they take? Must the security interest be recorded for purposes of its validity or enforceability?

A trademark registration may be pledged, either on its own or as part of a business (article L714-1 of the Intellectual Property Code). The pledge agreement does not need to be notarized but must clearly identify the registrations covered by the pledge and should be signed by both parties.

The pledge must be recorded with the Registry to be enforceable against third parties. The pledge is recorded with the Registry by completing an online form and uploading a copy of the agreement (with a French translation, if necessary) on the Registry’s online portal. Official fees are €27 per trademark, with a maximum charge of €270 for 10 or more marks. The recordal can be processed on an expedited basis for an additional fee of €52 per mark.

ENFORCEMENT

Trademark enforcement proceedings

  1. What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialized courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Acts of infringement constitute both a criminal and civil offence and, as such, a claim for trademark infringement can be brought before either the criminal or civil courts (articles L716-4 and L716-9 et seq of the Intellectual Property Code). As a criminal offence, acts of infringement can be punished through a fine of up to €400,000 (€2 million for a legal entity) and four years’ imprisonment. However, the vast majority of trademark infringement claims are heard by the civil courts.

There are nine civil courts with jurisdiction to hear intellectual property infringement cases: Bordeaux, Lille, Lyons, Marseille, Nanterre, Nancy, Paris, Rennes and Fort-de-France. The high court and the court of appeal in Paris have exclusive jurisdiction over EU trademark infringement claims (articles R716-21 and R717-11 of the Intellectual Property Code).

Procedural format and timing

  1. What is the format of the infringement proceeding?

Infringement proceedings before the civil courts are introduced via a writ of summons, which presents the background of the dispute, the legal arguments and the claimant’s demands. It should also include an indication of the steps taken to settle the matter amicably or justify why such steps have not been taken. The writ must be served on the defendant by a bailiff and then filed with the court.

Both parties will need to be assisted by a lawyer during the proceedings. The parties are heard by a pretrial judge, who will set the time limits for each party’s submissions and evidence in support. Once the judge deems that the case is ready to be decided, a closure order will be issued, setting down the case for a hearing before professional judges.

During the hearing, it is rare for experts or witnesses to be heard. Their testimony will more generally be submitted in writing as part of the evidence in support of a party’s submissions. After the hearing, the tribunal will hand down its decision within one to two months. The parties may settle their dispute at any point up to the issuance of the court’s decision. First instance proceedings currently take approximately 24 months from filing the writ of summons to the court’s decision.

Unlike civil proceedings, criminal proceedings are initiated and conducted by the public prosecutor, and cannot be stopped by either party, which limits the possibilities for settlement.

Discovery is not available under French law. However, it is possible under certain circumstances to carry out a search and seizure procedure before initiating an action on the merits or once the proceedings have started (article L716-4-7 of the Intellectual Property Code). This procedure requires a court order authorizing the claimant to seize the infringing goods or samples and related documents. The seizure is carried out by a bailiff who may be assisted by an expert. This is an effective way to obtain proof of the infringing acts. The claimant must then serve proceedings within 20 business days or 31 calendar days from the end of the seizure operations.

Burden of proof

  1. What is the burden of proof to establish infringement or dilution?

In accordance with the general rules of French civil procedure, the burden of proof lies with the claimant, which will have to take all the necessary steps to establish the facts allegedly constituting an act of infringement.

To obtain a preliminary injunction, the trademark owner will also need to demonstrate that the violation of its trademark appears likely or is about to take place (article L716-4-5 of the Intellectual Property Code).

Standing

  1. Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Infringement claims are generally brought by the trademark owner. If the trademark is jointly owned, each co-owner may act alone without the prior consent of the others. The assignee of a trademark is entailed to sue for infringement once the assignment agreement has been recorded with the Registry.

Exclusive licensees are also entitled to bring infringement claims, provided that the license agreement is recorded with the Registry, that the terms of the license do not prohibit it and the licensor fails to do so (article L716-4-2 of the Intellectual Property Code). If the licensor initiates a trademark infringement action, its exclusive licensees can join the proceedings and will be entitled to remedies.

Non-exclusive licensees are not entitled to bring trademark infringement proceedings in their own name but can join the action when it is introduced by their licensor and benefit from the remedies obtained.

The same rules also determine standing to instigate criminal proceedings.

Border enforcement and foreign activities

  1. What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

Border enforcement measures generally require the right holder to complete a border detention request. It is a preventive measure that can be taken even if the right holder is not aware of any actual infringement. Under the relevant EU regulation, these actions can target goods being imported into the European Union as well as goods that are declared for export.

Filing an application for action is free of charge. Once approved by Customs, the application for action is valid for one year and can be renewed annually on written request. Customs may also proceed with the spontaneous detention of goods that they consider likely to infringe a trademark, but the right holder must act quickly to file a detention request (article L716-8 et seq of the Intellectual Property Code).

The import and export of infringing goods are prohibited, as are their transit, transhipment and warehousing, regardless of whether the goods are not intended to be placed on the French market. This right will fall away if the holder of the goods can establish that the status of the goods does not constitute an infringement in the destination country (articles L713-3-1 and L716-9 of the Intellectual Property Code).

Discovery

  1. What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

French civil procedure does not provide for discovery per se. However, before issuing proceedings and up to trial, subject to certain conditions, the trademark owner can obtain evidence of infringing acts by requesting authorization from the court to conduct a search and seizure procedure with the assistance of a bailiff. This procedure will entitle the claimant to seize the infringing goods or samples, along with any related documents (article L716-4-7 of the Intellectual Property Code). This is a more cost-effective procedure compared to discovery.

If the adverse party is based outside France, the trademark owner will have to rely on disclosure devices provided under the relevant local law to obtain evidence. Regulation (EU) 2020/1783 of the European Parliament and of the Council of 25 November 2020 on cooperation between the courts of EU member states in the taking of evidence in civil or commercial matters (taking of evidence) may enable trademark owners to obtain disclosure in other EU countries by relying on an application to their national courts.

However, and as far as we are aware, the applicability of Regulation (EU) 2020/1783 to the search and seizure procedure has not yet been determined by the French courts. In addition, once trademark infringement proceedings have commenced, the trademark owner can request the court to order the defendant to provide all relevant documents and information to determine the origin of the infringing goods and the distribution networks used (article L716-4-9 of the Intellectual Property Code).

Timing

  1. What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

A preliminary injunction can usually be obtained within six months or a shorter time frame when the injunction is requested on an expedited basis due to special circumstances. The length of a regular infringement claim varies depending on the courts. However, in general, from the writ of summons to the decision at first instance, an infringement procedure currently lasts for approximately 24 months. The appeal procedure is of a similar length.

Limitation period

  1. What is the limitation period for filing an infringement action?

An infringement action must be filed within five years of the date on which the trademark owner discovered or should have discovered the last instance of infringement (article L716-4-2 of the Intellectual Property Code). As trademark infringement is considered to be a continuous offence, each new infringing act opens a new five-year limitation period. As a result, when applying the five-year prescription period, French courts generally consider that it only applies to acts committed more than five years before the service of proceedings and that infringing acts committed less than five years ago can still be litigated.

Litigation costs

  1. What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Litigation costs cover mandatory costs and lawyers’ fees. The judge is obliged to rule on which party will pay the mandatory costs – usually the losing party. At first instance, costs include the service of the writ and filing it with the court, as well as the service of the decision, which vary depending on the location and level of urgency, but generally amount to approximately €250. At appeal, a stamp tax of €225 must be paid and costs also include the service of the decision. Finally, the fees of the winning party’s lawyer can be recovered

if included in the party’s demands, with the final amount left to the discretion of the judge (article 700 of the Civil Procedure Code). Generally speaking, cost awards for lawyers’ fees are low, falling well below fees actually incurred.

Appeals

  1. What avenues of appeal are available?

A decision from the high court can be appealed to the court of appeal. The time limit for filing an appeal against a civil judgment is one month. First instance decisions are automatically enforceable unless the court decides otherwise. It is therefore possible to enforce the decision even though an appeal is pending. The court of appeal retries the case, on fact and law, but rules only on the grounds of the first instance decision expressly challenged in the declaration of appeal or the first submissions of the party that did not initiate the appeal. No additional demands may be introduced during the appeal procedure.

Appeal court decisions can be appealed to the Supreme Court, which only reviews the application of the rule of law and not the merits of the case.

Defenses

  1. What defenses are available to a charge of infringement or dilution, or any related action?

Trademark infringement claims are often defended by arguing that the conditions for infringement are not met, for instance by denying the likelihood of confusion or by claiming that the use of the infringing sign does not constitute use in the course of trade.

Other defenses include the fact that the use of the mark benefits from the necessary reference exception or the exhaustion of rights principle, constitutes a legitimate use of the mark, or is the defendant’s name.

Other procedural defenses include acquiescence (ie, where the claimant has knowingly tolerated use of the prior trademark for a period of five years or more) and expiry of the prescription period.

Finally, a defendant to a trademark infringement claim can challenge the rights on which the action is based, forming a counterclaim for invalidation of the claimant’s trademark based, for example, on non-use or lack of distinctiveness.

Remedies

  1. What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

A preliminary injunction can be obtained provided that the trademark owner demonstrates that the violation of its trademark appears likely or is about to take place (article L716-4-5 of the Intellectual Property Code). Provisional remedies in injunctive proceedings include orders prohibiting the infringing acts, the seizure or consignment of the suspect goods, the award of provisional damages, or the obligation to provide financial guarantees to the right holder while proceedings on the merits are heard.

Permanent remedies are granted in proceedings on the merits and include orders to:

  • cease all infringing acts;
  • deliver up, destroy or recall the infringing products; and
  • orders to publish the decision in the press or on the infringer’s website.

The court is only entitled to grant the remedies that have been specifically requested by the trademark owner in its demands (article L716-4-11 of the Intellectual Property Code).

For monetary remedies, the Intellectual Property Code provides that the amount of damages shall be calculated taking into account the loss of profit and the moral damage suffered by the right holder, and the profit made by the infringer. There are no punitive damages under French law (article L716-4-10 of the Intellectual Property Code).

Remedies under criminal law are fines of up to €400,000 (€2 million for a legal person) and four years’ imprisonment (article L716-9 of the Intellectual Property Code).

ADR

  1. Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Several forms of alternative dispute resolution (ADR) exist, although they are rarely used in practice for claims related to trademarks. The number of cases is nevertheless expected to grow in the near future as the French government and courts seek to promote ADR.

ADR techniques include conciliation, which can be carried out with the intervention of a third party, and mediation, which is conducted with the assistance of a professional mediator. The parties may decide to resort to ADR at any time, both before and after commencing proceedings.

ADR has advantages in terms of confidentiality, flexibility and speed. The parties can withdraw from the proceedings at any time. The risk of cancellation for the trademark owner is excluded. However, it is not possible to obtain a preliminary injunction or a seizure order, for which the courts have a monopoly.

In addition, the Intellectual Property Code also provides for the possibility of arbitration.

UPDATE AND TRENDS IN TRADEMARKS IN FRANCE

Key developments of the past year

  1. Are there any emerging trends, notable court rulings, or hot topics in the law of trademark infringement or dilution in your jurisdiction?

The 2019 reform of French trademark law afforded new powers to the Registry, which now has exclusive jurisdiction to hear invalidity and non-use cancellation actions in certain circumstances, at lower costs and in a tight time frame. Trademark owners have had to fine-tune their enforcement strategies to take this development into account.

Trademark owners have observed the Registry’s recent tendency to apply the distinctiveness requirements more strictly, in particular in relation to marks consisting of terms in foreign languages and slogans.

Unsurprisingly, non-fungible tokens (NFTs) are also raising interesting issues for French trademark owners as they review whether and how to extend their portfolio of rights to cover NFTs and how to enforce such rights.

In a decision handed down in February 2022, the high court in Paris invalidated an assignment agreement of French trademarks made free of charge on the basis that, according to French civil law, such an assignment should be considered a donation and, consequently, must be signed before a French notary to be valid. This decision may impact past trademark assignments that were made without financial consideration and the drafting of this type of agreement in the future.

* The information in this chapter was accurate as at January 2023.

If you need more consulting, please Contact Us at TNHH NT International Law Firm (ntpartnerlawfirm.com)

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