Trade Marks 2022 Comparisons

Two sets of statutory rules govern trade marks having effects in France: French law for national trade marks, and European Union law for EU trade marks.

French trade mark law is regulated by the French intellectual property code, particularly by Articles L.711-1 to L.731-4 of this code. French trade mark law has been subject to an important reform, implemented on 13 November 2019 and 9 December 2019, and fully applicable since April 2020. This reform is referred to as the "PACTE Law". French case law, developed by the courts, clarifies the outlines of these statutory rules and is largely influenced by European case law.

EU trade marks are regulated by Regulation (EU) 2017/1001 and Directive 2015/2436. In a similar way to the French system, the case law of the CJEU clarifies specific issues.

Aside from the above, France is a signatory to the Paris Convention for the Protection of Industrial Property of 1883.

The French system provides for different types of trade marks.

• Trade marks registered to designate goods and services. Trade marks are not limited to graphic representation: they may be verbal, figurative, of shape, of position, sound, holographic, or even multimedia (INPI, Declaration No 2019-157).
• Guarantee trade marks (previously referred to as “certification” marks) aim at identifying the origin of goods and services of which some characteristics (eg, quality, material, manufacture) are guaranteed (Article L.715-1 of the French Intellectual Property Code).
• Collective trade marks are registered by a group (eg, manufacturers, producers, associations, public law entities) that authorises their use provided a specific set of rules – developed by the owners – is respected (Article L.715-6 of the French Intellectual Property Code).

There are no statutory trade marks under French trade mark law.

The French system allows the opposability of unregistered well-known trade marks with regards to Article 6 bis of the Paris Convention.

However, in order to be enforceable in France, a well-known trade mark must have acquired a particular reputation or fame among French consumers of the given goods/services, and must be known by a large proportion of the French public for the goods or services at issue.

French trade marks, as well as EU trade marks, are registered for a period of ten years that is indefinitely renewable.

Article R712-24 of the French Intellectual Property Code provides that French trade marks are renewable within the last six months of the ten-year period. More precisely, the renewal can be filed until the last day of the month of the trade mark filing.

After this term, French trade marks can still be subject to a late renewal for an additional “grace period” of six months after the term, subject to payment of an additional fee.

The French system transposes the EU exhaustion principle provided for in European Directive 89/104/EEC and Regulation (EU) 2017/1001, itself inherited from Competition Law. It is provided for in Article L.713-4 of the French Intellectual Property Code.

In essence, once the goods bearing the trade mark are put on the European Economic Area market by the trade mark owner or with their consent (notably in application of a licence agreement), the owner is not entitled to oppose their advertisement or resale within this territory. Their monopoly is exhausted.

However, the exhaustion system will not apply when the trade mark owner justifies legitimate reasons, such as the modification or alteration of the goods, their inadequate reconditioning as regards to their quality, or the reputation of the trade mark for luxury goods. French case law specifies in this respect that the mere existence of a selective distribution network is insufficient to establish a risk of market partitioning.

The use of symbols, such as ®, which are derived from the US system, is completely optional in France. Its use, if any, has no influence on the opposability of the trade mark owner's rights, as expressly stated in the Paris Convention.

There is no specific procedures to assign a trade mark. The relevant provisions are those of general contract law, arising from Article 1101 et seq of the French Civil Code.

However, the assignment must be in writing to be valid (Article L.714-1 of the French Intellectual Property Code). It must precisely identify the content of the assigned rights (assigned goods and services, duration, territory, promotional use, right to licence) and the assignment price.

Besides, if the FTO is not required to formally approve the assignment, a recording of the assignment in the National Trademark Register is necessary for the assignment to be enforceable against third parties.

It is strongly recommended to conclude licence agreements in writing, as it allows the owner to precisely identify the scope of the licence (duration, typology of goods/services, distribution circuit, licensing fees and royalties, etc).

Indeed, a written contract and a formal recording before the National Trademark Register is required for the licence to be enforceable against third parties.

French case law may admit the existence of tacit licences under certain conditions. However, in order to ensure that such licences are not perpetual, the trade mark owner may, at any time, terminate the tacit licence and request the cessation of exploitation of the sign within a reasonable period of time.

As regards to 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.

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, as mentioned in 2.1 Assignment Requirements or Restrictionsand 2.2 Licensing Requirements or Restrictions, 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.

Apart from the aforementioned obligations, the parties must comply with the general obligation of good faith provided for in Article 1104 of the French Civil Code.

There are no further requirements for an assignment or licence to be valid.

In France, the system of filing an application based on use or intent to use does not exist. There are no reasons that an assignment or licence would not be valid during the application process.

The parties are free to negotiate the guarantees given in order to mitigate the risk of non-registration and will define the impact of the forthcoming registration – if any – on the contract.

Should the assigned/licensed trade mark application not be registered by the relevant trade mark office, the agreement may be considered invalid for lack of subject matter and may be terminated.

A trade mark is an immaterial asset that, as such, can be given as a security. To be opposable to third parties it should be registered in the National Trademark Register. In this respect, securities and creditors are often registered in the National Trademark Register.

The French principle is that a trade mark cannot be protected merely by virtue of its use. Registration is the only way to benefit from trade mark rights. However, the use of a sign can result in two main situations.

The first situation involves unregistered well-known signs, under Article 6bis of the Paris Convention, although the case law is very strict on applying this concept. The sign may enjoy a trade mark protection without registration provided that it has acquired a strong reputation among French consumers, and that these consumers spontaneously associate this sign with the goods and services for which it is used.

The second situation is the acquisition of distinctiveness through use (Article L.711-2 of the French Intellectual Property Code). In this case, intensive use, which guarantees the function of identifying the origin of the goods, does not confer protection as such, but makes it possible to obtain registration of the trade mark that is not inherently distinctive, thus in principle not inherently registrable.

The National Trademark Register, which is administered by the French Trademark Office, gathers all French trade marks.

Each new event related to a trade mark (eg, application, refusal, registration, limitation, assignment, licence, cancellation) is published in a Bulletin (BOPI) which is then incorporated into the National Trademark Register.

The French Trademark Office (FTO) also provides an online database which allows to consult trade mark rights having effect in France and French Polynesia.

It is highly recommended to conduct an availability search before applying to register a mark.

As mentioned in 1.5 Term of Protection, French trade marks are registered for a period of ten years that is indefinitely renewable provided that the renewal occurs in accordance with the conditions of Article R712-24 of the French Intellectual Property Code.

A trade mark registration can not be “updated or refreshed” as such.

It can be renewed every ten years as previously mentioned, and its scope can always be specified at any time by the trade mark owner through a clarification or restriction of the list of goods and services covered by the registration.

However, extending the list of goods and services after the application is not permitted.

The application to register a trade mark can be filed online on the FTO’s website. Any natural or legal person can file an application in its name and the applicant will not need to prove its identity. The applicant must identify the type of trade mark and the type of sign it seeks to register, and provide elements allowing to delimit the scope of the protection.

The requirement for graphic representation has been abandoned with the introduction of the PACTE Law in 2020, which considerably expanded the list of categories of signs which are eligible to trade mark protection. This list now includes word, figurative, shape, hologram, pattern, colour (single or combination), sound, motion, multimedia and position marks. Such categories are listed by Declaration 2019-157 of the FTO’s Director.

No proof of use or specimen of use is required to apply for a trade mark.

The filing of a trade mark application requires the payment of a fee to the FTO to be admissible (the fee varies depending on the number of designated classes and on whether the trade mark is extended to French Polynesia). Since the application can designate multiple classes of goods and services, the more classes the application covers, the more expensive the application will be.

The French system does not require the applicant to use its mark in commerce before the registration.

The French system does not allow the possibility to register series mark. In practical terms, it means that if an applicant wishes to file one or more sign(s), it will be required to file a different trade mark application for each of these signs.

Unlike practices of some foreign offices, the FTO does not carry out an analysis of prior rights in its examination of an application for registration.

It only considers the regularity of the filing of the application (formal requirements), and the distinctiveness of the sign (Article L.711-2 of the French Intellectual Property Code). The FTO is becoming increasingly stricter on assessing distinctiveness of the sign.

Registration of Trade Marks

Regarding the registration process, third parties have the right to participate by filing observations before the FTO within two months of the publication of the trade mark application. Such observations may particularly relate to the lack of distinctiveness of the trade mark application.

They can be filed by any natural or legal person that wishes to draw the Office’s attention on absolute grounds for refusal of the trade mark application. The filing of observations does not open any adversarial proceeding, thus the trade mark applicant is not given the chance to respond. Moreover, the FTO does not respond either to the third-party observations and in fact does not necessarily take them into consideration when examining the trade mark application.

Opposition Proceedings

Regarding opposition proceedings, third parties can also file written observations before the FTO in order to seek refusal of registration of the contested trade mark. In this regard, the PACTE law introduced, in April 2020, the possibility for any third party benefiting from prior rights to file an opposition proceeding on the ground of one or more of its prior rights.

The PACTE law also expressly listed the invocable prior rights in this context, including in particular (Article L.711-3 of the French Intellectual Property Code):

• prior trade marks;
• prior trade marks enjoying a reputation – registered or unregistered;
• company name, trade name, commercial signs or domain names;
• geographical indications; and
• name, image or reputation of a local authority or a public establishment or public entity.

The applicant can respond to the opposition by submitting written observations. The outcome of the opposition proceedings will result in the registration or refusal of the trade mark application.

It is possible to revoke the application during the process of registration, partially or entirely (Article 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.

It is possible to divide a trade mark application in order to overcome a partial refusal or an opposition (Article R.712-27 of the French Intellectual Property Code).

The goods and services designated in the dividing application must necessarily be more restrictive than those of the initial application.

The consequences of providing incorrect information vary depending on the type of information 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 in rectification of 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. However, 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.

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 applicant.

If the registration is provisionally refused, the FTO sets a time limit for submitting observations 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.

First, as mentioned in 4.9 Refusal of Registration, when the FTO refuses the registration of a trade mark, the first decision is provisional and the FTO sends a notification to the applicant and sets a time limit for them to submit observations.

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.

France has participated in the Madrid system since 1997.

Third parties may file an opposition against a trade mark application within two months after publication of the application.

There is no system of request for extension of time limit to file an opposition in France.

The legal grounds for filing an opposition to a trade mark application are listed in Articles L.712-4 and L.712-4-1 of the French Intellectual Property Code. As mentioned in 4.5 Consideration of Third-Party Rights in Registration, the PACTE law extended the invocable grounds for opposition (Article L.711-3 of the French Intellectual Property Code):

• prior trade marks; 
• prior trade marks enjoying a reputation – registered or unregistered;
• company name, trade name, commercial signs or domain names;
• geographical indications;
• name, image or reputation of a local authority or a public establishment or public entity.

As for opposition proceedings, the FTO does not consider arguments relating to dilution and merely applies a strict application of the assessment of the likelihood of confusion between the signs, the goods and services and/or the activities operated.

However, dilution can be invoked before the French courts in an infringement lawsuit, in order to prevent use of a mark in said lawsuit.

Any natural or legal person that owns an opposable prior right, amongst those listed above in 5.2 Legal Grounds for Filing an Opposition, can file an opposition. As detailed, the opponent does not necessarily need to own a registered trade mark since other valid prior rights can be invoked.

Opponents do not necessarily need to be represented, for instance by an attorney, before the FTO. 

Opposition fees before the FTO are EUR400 if the opposition is based on just one prior right, and EUR150 per additional prior right invoked in the frame of the opposition.

The average attorney’s fees are very hard to determine since they vary from one profession to another and are not based on any objective harmonised schedule.

The opposition procedure has been profoundly reformed by the PACTE law, introduced in France in late 2019 and applicable:

• for all opposition proceedings brought against trade marks filed after 11 December 2019;
• since 1 April 2020 for all invalidation and revocation actions brought before the FTO.

For all opposition proceedings brought against trade marks filed after 11 December 2019, the procedure is as follows.

• The opponent has a period of two months from the publication of the trade mark to file formal opposition against the contested trade mark application.
• The opponent then has a period of one month, following the opposition deadline, to submit their written observations and any other relevant documents (including proof of the earlier rights claimed).
• The FTO notifies the applicant of the opposition and initiates the "adversarial" phase:
1. the applicant will be given an initial period of two months to respond to the opposition arguments;
2. the parties may then exchange several sets of observations within respective deadlines of one month, set by notifications from the FTO;
3. the parties can request a presentation of “oral observations” within the framework of a hearing which will be fixed by notification from the FTO if necessary; and
4. the parties can jointly request up to three suspensions, for periods of four months each, which may or may not be cumulative (ie, up to 12 months maximum of suspension).

• The decision is issued within three months of the end of the adversarial procedure. If no decision is issued, the opposition shall be deemed to have been rejected. 

The FTO’s decision can be contested before the competent Court of Appeal within one month from the notification of the FTO’s decision.

Once the formal appeal is filed, the appellant will have three months to file written observations in support of the appeal.

Before 1 April 2020, all invalidation and revocation proceedings were filed before the courts.

The implementation of the PACTE Law set up an administrative procedure in invalidation and revocation of registered trade marks, which has led to a shared jurisdiction between the FTO and the courts.

Revocation proceedings on the ground of lack of genuine use can only be filed as early as five years after the registration date.

To the contrary, all other invalidation actions can be filed without any specific time limit: the FTO will hear actions based on grounds of absolute invalidation and/or of relative invalidation resulting from the existence of prior rights.

However, the French system provides a rule known as the "forfeiture by acquiescence", according to which a third party may not challenge a registered trade mark which use has been knowingly tolerated by the third party for more than five years.

A trade mark may be revoked or cancelled on the basis of two set of grounds: absolute grounds and relative grounds.

The absolute grounds for invalidation are the following (Article L.711-2 of the French Intellectual Property Code):

• the mark is devoid of distinctive character;
• the mark consists exclusively of elements which may designate a characteristic of the covered goods and services;
• the mark consists exclusively of the shape of the product imposed by its nature or technical function;
• the mark is a national emblem;
• the mark is contrary to public policy or morality;
• the mark deceives the public;
• the mark is a protected appellation of origin, geographical indication, or plant variety; and
• the mark was filed in bad faith.

The relative grounds for invalidation actions are based on prior rights (trade marks, well-known signs, copyrights, corporate name, domain names, public entity name, etc) and are listed at Article L.711-3 of the French Intellectual Property Code.

Other Options

Revocation actions can be filed:

• in case of absence of genuine use of the trade mark for an interrupted period of over five years (Article L.714-5 of the French Intellectual Property Code);
• if the trade mark has become a generic or common name to designate the covered goods and services (Article L.714-6 of the French Intellectual Property Code); and/or
• if the trade mark has become misleading for the public (Article L.714-6 of the French Intellectual Property Code).

As mentioned in 6.1 Timeframes for Filing Revocation/Cancellation Proceedings, the implementation of the PACTE Law set up an administrative procedure in invalidation and revocation of registered trade marks, which has led to a shared jurisdiction between the FTO and the Courts since 1 April 2020. Since then, all owners of prior rights, as listed in Articles L.711-3 and L.716-2 of the French Intellectual Property Code, may act directly before the FTO for invalidation proceedings.

As for revocation actions, Article L.716-3 of the French Intellectual Property Code provides that any interested person is entitled to bring an action for revocation before the FTO as well as before the French Courts.

The claimant will be invited to prove their rights on the invoked prior rights.

As previously evoked, there are special procedural provisions for trade mark proceedings in Articles L.716-1 et seq of the French Intellectual Property Code, which distribute the special jurisdiction for trade mark matters between the French Trademark Office and French Civil Courts. 

The aforementioned administrative procedures for invalidation and revocation of registered trade marks before the FTO are effective since 1 April 2020. This set of rules is now provided for in Articles L.716-5 et seq of the French Intellectual Property Code.

French Courts maintain exclusive jurisdiction to hear invalidation and revocation actions when brought in connection to any other claim, or in a counterclaim falling within the jurisdiction of the Courts (and in particular actions for infringement and unfair competition).

French Courts also continue to have jurisdiction for invalidation actions formed primarily, when based on the existence of prior copyrights, design and models rights and/or personality rights.

Partial revocation of invalidation is always possible, especially because the FTO and the Courts assess their decision with regards to each of the covered goods and services.

For example, a trade mark may be genuinely used for part of the covered goods only and remain in force for those goods; a sign may be devoid of distinctive character only for part of the covered goods and services.

Revocation/cancellation proceedings can be filed against all or part of the trade mark registration. The scope of the action is determined by the initial claim and usually remains unchanged until the end of the proceedings (ie, the FTO’s or Court’s decision).

The scope of the action can, however, be amended in some circumstances. The most common is when the owner of the trade mark subject to the action spontaneously surrenders to part of its trade mark rights, for instance by withdrawing part of the goods/services covered by its registration that are subject to the action. This will automatically alter the scope of the revocation/cancellation action.

Moreover, in the frame of legal actions before Courts, the claimant to the revocation/cancellation action could also abandon part of its initial claim or even add a new/additional claim before the written part of the proceedings is closed, hence alter the scope of the action. 

As mentioned in 6.4 Revocation/Cancellation Procedure, since 1 April 2020, French Courts maintain exclusive jurisdiction to hear invalidation and revocation actions when brought in connection to any other claim, or in a counterclaim falling within the jurisdiction of the Courts (Article L.716-5 of the French Intellectual Property Code). In this case, all actions will be heard together.

This jurisdiction is especially maintained in case of actions for infringement and unfair competition.

Procedures before the FTO

The introduction of the PACTE Law in 2020 allowed the FTO to have exclusive jurisdiction to refuse, revoke or cancel marks that were filed fraudulently, based on Article L.711-2 of the French Intellectual Property Code as an absolute ground of refusal, see 4.9 Refusal of Registration, in the frame of opposition or cancellation actions:

• based on bad faith – according to the first decisions of the FTO on this ground, bad faith is assessed similarly to fraud, namely:
1. when it is demonstrated that the applicant/owner of the fraudulent mark has filed said mark with a malicious intent, (ie, with the intent of unduly appropriating benefits attached to the plaintiff/plaintiff’s activities, with the intent of depriving the plaintiff of a sign necessary to its activity, with the intent of hindering the plaintiff by opposing the ownership of the mark that was filed fraudulently...); and
2. when it is demonstrated that the applicant/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 cancellation, but assignment – by the courts – of the fraudulent mark (Article L.712-6 of the French Intellectual Property Code).

As regards to specific IP rules, the French Intellectual Code provides a rule known as the "forfeiture by acquiescence" at Article L.716-2-8, according to which a third party may not challenge a registered trade mark which use has been knowingly tolerated by the third party for more than five years.

As regards to general statutes of civil law, the PACTE Law now expressly provides that 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.

The owner of a trade mark is entitled to several actions which can be brought before the courts.

The main cause of action as regards to trade mark would be the infringement on the basis of trade mark law. Infringement actions can lead to:

• the prohibition of the use of the sign in trade for identical or similar goods and services on the basis of their trade mark rights;
• the invalidation of the infringing trade mark if the sign at issue has been filed or registered; and/or
• compensation for the damage suffered as a result of the infringement, the likelihood of confusion, the damage to the image and reputation, the dilution caused, etc.

As regards actions based on a well-known unregistered trade mark, the claimant may file a civil liability action (Article L.713-5 of the French Intellectual Property Code).

In parallel to the civil infringement actions, the claimant may file a criminal action to obtain criminal sanctions are also available set in Articles L.716-9 et seq of the French Intellectual Property Code, see 8.9 Trade Mark Infringement as an Administrative or Criminal Offence. Nevertheless, right holders usually prefer civil proceedings due to the nature and specificities of intellectual property rights.

Trade mark infringement actions can be initiated by the owner of the trade mark or by the exclusive licensee of the trade mark if (i) the licence agreement does not prohibit it, and that (ii) a formal notice was sent to the licensor identifying the infringement and asking the licensor to act against the infringement, and the licensor did not respond in a reasonable time (Article L.716-4-2 of the French Intellectual Property Code). 

Nonexclusive licensees are not allowed to file an action for infringement. They may however intervene in the action for trade mark infringement and have their own prejudice determined if an infringement action is initiated by the owner and/or the exclusive licensee (Article L.716-4-2, Section 4 of the French Intellectual Property Code).

Besides, there is no rule preventing the owner from taking action for infringement before its mark is registered.

The French system does not permit representative or collective actions such as class actions for trade mark proceedings.

The only collective action that exists under the French system is provided for consumers who have suffered the same damage from a professional.

Issuing a formal cease and desist letter is a legal prerequisite to filing an infringement lawsuit. However, failure to send a letter of formal notice beforehand is not sufficient to invalidate the action according to case-law. Further to this, Courts are becoming more and more insistent on pushing the parties towards mediation and other ADR proceedings.

As regards the status of the claimed trade mark, no decision can be issued on the basis of an earlier trade mark until the trade mark is registered.

As regards restrictions on the trade mark owner asserting its rights against other, the owner may be liable for the following, depending on its behaviour:

• abusive action;
• denigration, if the owner publicly accuses the defendant of infringement without any court decision stating so; and
• obstruction of competition, in case of abusive action against distributors benefiting from the principle of exhaustion of rights.

There are, essentially, two ways of bringing an action before the courts.

The first way is adversarial: the document initiating proceedings is a written document directed to the defendant and transmitted to the court, which must precisely determine the existence of the trade mark rights concerned, the contested use or trade mark, the scope of the dispute, and the status of the claimant (owner, exclusive licensee). This document must also mention the steps taken to reach an amicable settlement of the dispute.

The second way is non-adversarial: intellectual property law provides for specific procedures enabling the plaintiff to gather evidence of the infringement before any lawsuit, and thus avoid the destruction of the infringing products or materials. By essence, this procedure must imperatively be authorised by a judge and is requested in a non-adversarial manner without the defendant. This procedure is referred to as saisie contrefaçon (counterfeit seizure) and is provided for at Article L.716-4-7 of the French Intellectual Property Code.

Once the seizure operations have been carried out, the plaintiff will have a maximum of 31 days to deliver its written summons to the seized party, otherwise the seizure would be void.

Only ten regional courts (Tribunal Judiciaire and Courts of appeal), as listed in Chart VI annexed to Article D.211-6-1 of the French Code de l’organisation judiciaire, have special jurisdiction for handling copyright proceedings: Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg and Fort-de-France.

Before filing a lawsuit, some costs are necessarily incurred due to the execution of bailiff's reports, the drafting of a request for infringement seizure and the execution of counterfeit seizure operations by a bailiff, as well as the drafting and sending of a letter of formal notice.

Judges are not bound by the decisions of the FTO. They may use these decisions in the course of developing their motivations and take them into account in their assessment, but they are not bound by them.

There are no declaratory judgments in France.

As mentioned in 7.6 Initial Pleading Standards, IP law provides for specific proceedings enabling the plaintiff to gather evidence of the infringement before any lawsuit, and thus avoid the destruction of the infringing products or materials: this procedure (saisie contrefaçon (counterfeit seizure)), is non-adversarial and can only be performed if authorised by a judge (Article L.716-4-7 of the French Intellectual Property Code).

The counterfeit seizure allows the plaintiff to appoint a bailiff to inspect the counterfeiting company's offices or factories, in order to collect information regarding the infringement (quantities purchased, quantities sold, promotional materials concerned, invoices, etc) and to assess the amount of the prejudice.

There is also a procedure known as the right to information, whereby the plaintiff is entitled to request communication of the quantities of infringing products sold and purchased as well as other information likely to estimate their prejudice (Article L.716-7-1 of the French Intellectual Property Code).

However, these procedures apply in IP matters in general and are not limited to trade mark infringements.

As mentioned, there are special procedural provisions for trade mark proceedings in Articles L.716-1 and seq of the French Intellectual Property Code, which distribute the special jurisdiction for trade mark matters between the French Trademark Office and French Civil Courts. 

The French Trademarks Office (INPI) has exclusive jurisdiction over most of the trade mark revocation and invalidation actions since 1 April 2020 when the actions are filed as a main cause of action (Article L.716-5 of the French Intellectual Property Code).

However, Civil Courts have exclusive jurisdiction for revocation and invalidation actions in some specific cases set by law and notably when the latter are filed as a defence to a main action for trade mark infringement or unfair competition (Article L.716-5 of the French Intellectual Property Code).

Civil Courts also have exclusive jurisdiction over trade mark infringement procedures. Therefore, since the implementation of the PACTE Law in 1 April 2020, the parties have very little influence on who is the decision maker.

Under French law, the criteria to establish trade mark infringement is that the litigious sign must be used in the frame of a commercial activity for identical or similar goods and services (Article L.713-2 of the French Intellectual Property Code).

French law does not refer to a use “as a trade mark” per se, thus the claimant to an infringement action does not need to establish such use.

However, in light of French trade marks practice and case law, if the litigious sign is used merely in a purely descriptive manner, the defendant to the action could potentially successfully claim this as a defence to the infringement action.

The factors that are taken into consideration when assessing trade mark infringement are essentially the following, which are assessed as a whole:

• the distinctiveness of the earlier trade mark;
• identity or similarity of the signs;
• identity or similarity (including complementarity) of the goods and services; and
• relevant public and its degree of attention.

Aside from the likelihood of confusion, other elements that can be brought up by trade mark owners, especially of trade marks that are well-known, in the frame of trade mark infringement actions are trade mark dilution and tarnishment, ie, damage caused to the image/reputation of the trade mark.

Cybersquatting can also constitute a form of infringement.

The main benefit of a trade mark registration under French Trademark Law is that the trade mark is presumed valid and enforceable, unless proven to the contrary.

Moreover, for a period of five years following the registration of the trade mark, it can not be subjected to an invalidation action based on non-use (Article L.714-5 of the French Intellectual Property Code).

Article L.713-6 provides a list of cases where a trade mark owner can not oppose its trade mark rights against a third party, which are:

• the litigious sign is the family name or address of the third party;
• the litigious sign is descriptive or devoid of distinctive character;
• the litigious sign is used in a descriptive manner; and
• the litigious sign was used in good faith prior to the trade mark registration as a business name, company name, commercial sign or domain name.

Moreover, other valid defences would be:

• if the defendant claims priority on its sign that goes back earlier to the filing of the trade mark invoked;
• lack of genuine use of the trade mark invokes if it has been registered for over five years;
• the trade mark invoked has become the generic term to describe the goods and services or a characteristic thereof;
• claiming a cause for revocation of the trade mark invoked (on relative or absolute grounds); and
• preclusion by acquiescence if the owner of the trade mark knew about and tolerated the litigious sign for over five years.

Article L.716-4-7 of the French Intellectual Property Code allows to pursue counterfeit seizure (see 7.10 Counterfeiting). As previously mentioned, this specific proceeding allows trade mark owners to request an order from a judge (more precisely the President of the Civil Court that is competent to hear the case on the merits) authorising a bailiff (who can be assisted by an expert if needed) to go to the defendants premises and gather all relevant information and seize all relevant documents and products that can contribute to establishing the trade mark infringement and the scope thereof (quantities, invoices, promotional supports, amount of the prejudice, etc).

Moreover, as noted in 7.10 Counterfeiting, the right to information allows the plaintiff to request the Court to ask for communication of the quantities of infringing products sold and purchased as well as other information likely to estimate their prejudice (Article L.716-7-1 of the French Intellectual Property Code).

Both these proceedings are, however, significantly different from the discovery phase in the USA.

Surveys are generally accepted and often appreciated by French Courts in trade mark matters.

Surveys can be submitted to establish notably: the distinctiveness (inherent or acquired through use) of a sign or the lack thereof, the reputation of a trade mark, the likelihood of confusion, the degree of attention of a certain category of consumers, etc.

Courts tend to take surveys into account when assessing the merits of a case, provided that the survey is carried out by a reliable institute and that the survey methods are clear. However, surveys are not the only way to prove likelihood of confusion and are not sufficient.

As mentioned in 7.2 Legal Grounds for Filing Infringement Lawsuits, trade mark infringement may constitute a criminal offense under French Law, so criminal sanctions are also available. Articles L.716-9 and seq set different amounts of fines and years of imprisonment depending on the scope of the infringement.

Right holders may either bring the alleged infringer directly before criminal court or intervene as a “civil party” in a criminal procedure brought before the court by a prosecutor. Nevertheless, right holders usually prefer civil proceedings due to the nature and specificities of intellectual property rights.

The costs of a civil action for trade mark infringement vary from case to case. The global budget of such legal action from start to finish (decision in the first instance) are very difficult to assess and depend on the time and difficulty of each proceedings.

Injunctive remedies, especially preliminary injunctions, are available under French trade mark law.

To obtain such remedies the trade mark owner must start a preliminary action before the President of the Civil Court and prove that the is a matter or urgency (actual or imminent infringement) that justifies granting preliminary measures without a decision on the merits.

Article L.716-4-6 of the French Intellectual Property Code specifically provides that the trade mark owner can obtain the following preliminary measures:

• an injunction to cease the infringement;
• a conservatory seizure of assets;
• blocking bank accounts; and
• ordering the deposit of a sum that would cover potential damages.

Article L.716-4-10 of the French Intellectual Property Code provides that the following factors are to be taken into account when determining the amount of monetary damages awarded to the trade mark owner:

• the negative economic consequences of the infringement for the trade mark owner (loss of earnings);
• the moral prejudice caused to the trade mark owner; and
• the benefits obtained by the defendant.

Where there is not enough elements to determine the above, the judge can alternatively allocate a lump sum.

There are no punitive damages under French law.

Under French trade mark law and practice, the judge can order the destruction of infringing products.

Articles 699 and 700 of the French Civil Procedure Code allow the judge to order the losing party to reimburse the costs and expenses of proceedings (including attorney’s fees) to the other party.

However, the allocated sum is a lump-sum and does not, in most cases, correspond to the costs actually incurred.

Under French law, the trade mark owner cannot obtain damages or other types of relief without starting a procedure that implies the notification to the defendant and an adversarial proceeding that allows the defendant to defend itself.

The only circumstance in which the defendant would not be notified is the specific counterfeit seizure procedure mentioned in 7.10 Counterfeiting and 8.7 Obtaining Information and Evidence. However this is just to obtain evidence, not relief.

The prevailing defendant can invoke Articles 699 and 700 of the French Civil Procedure Code and request the reimburse by the claimant the costs and expenses of proceedings (including attorney’s fees).

Moreover, in certain circumstances, where the action brought up by the claimant can be considered abusive, the Defendant can claim additional damages to repair its prejudice cause by the abusive nature of the procedure.

In cases where the plaintiff publicly accused the defendant of infringement before any decision was issued, the defendant can also file a counterclaim in disparagement and claim damages.

French Law does provide for customs seizures of counterfeits and parallel imports (Articles L.716-8 et seq of the French Intellectual Property Code).

At the written request of the owner of rights on a registered trade mark, customs can retain in the course of their controls products which they suspect to be counterfeit. The right owners are immediately notified of such detention. The public Prosecutor is also informed of the said measure by the customs administration.

The right owners have ten working days, or three working days in the case of perishable goods, from the notification of the detention of the goods to justify to the customs services either protective measures decided by the competent civil court, either to initiated civil or criminal proceedings and to have provided the guarantees intended to compensate the holder of the goods in the event that the counterfeit is not subsequently recognised, or to have lodged a complaint with the public prosecutor.

For the purposes of initiating the legal actions referred to in the fourth paragraph, the plaintiff may obtain from the customs administration the names and addresses of the consignor, the importer, the consignee of the detained goods or their holder, as well as images of these goods and information on their quantity, origin, provenance and destination by way of derogation from Article 59 bis of the Customs Code, relating to the professional secrecy to which the customs administration's agents are bound.

French trade marks law does not distinguish different types of remedies depending on the types of trade marks.

However, the amount of monetary remedies could potentially vary depending on the type of trade mark, ie, for instance if the infringement contributes to the tarnishment of a well-known trade mark.

There is an obligation under French Civil Procedure Laws to first try to amicably settle the matter prior to initiating a legal action, inter alia for trade mark infringement.

Therefore, the claimant to such action should take the first step in trying to settle the matter, prior to bringing it to the court. It is a legal obligation, however the recent case law, to consider that it does not suffice to invalidate the action.

That being said, if the action is initiated before the court, the defendant to the civil action can always try to approach the claimant through its legal counsel to propose a settlement.

Moreover, there are also alternative dispute resolution mechanisms available to the parties. For instance, mediation is one of them and judges often invite the parties to consider mediation in the early stages of a civil proceeding. Mediation conferences are, however, not mandatory and the parties can decline and refuse to engage into such mediation.

As mentioned above, alternative dispute resolution (ADR) mechanisms are available to the parties to a trade mark action.

Mediation is the most common of them and judges often invite the parties to consider mediation in the early stages of a civil proceeding. Mediation conferences are, however, not mandatory and the parties can decline.

If the parties to agree to start a mediation proceeding, the judge will issue an order for mediation, a mediator will be appointed, and the parties will be summoned to participate to mediation meetings until they reach an agreement which will officially put an end to the dispute.

It should be noted that in practice trade mark civil actions are rarely settled through mediation.

It can happen that other proceedings, parallel to a court action in a trade mark, would influence the latter.

It can range from a parallel action for trade mark infringement, a revocation or invalidation action, or even an opposition before a Trademarks Office.

In such cases, one of the Parties, or both Parties, can inform the court of the parallel action and ask the court to stay the proceedings while the parallel action is over, in order notably to avoid having contradictory decisions or simply by claiming that it is necessary in order to “ensure an efficient administration of justice”.

Decisions from the Civil Court of first instance can be subject to an appeal before French Courts of appeal and more precisely the court of appeal that has territorial jurisdiction depending on the Court of first instance.

The appeal must be filed within two months as from the notification of the decision of first instance.

The appeal proceeding normally lasts around a year and a half before a decision in issued.

There no special provisions that would apply specifically for trade mark matters in the frame of appellate procedures.

The appeal is limited to the scope of the declaration of appeal filed by the appellant, combined with the scope of the cross-appeal filed by the respondent, if any.

Therefore, depending on the scope of the parties appeals, the appeal can potentially be limited to the review of only part of the matter, or in some cases the whole matter.

In any event, the Appellate Court will fully review all the facts, law and evidence of the case for the whole scope of the appeal.

Trade marks can also be protected by copyright, provided the sign meets the requirement of “originality” imposed by French Copyright law. This is the case especially when the trade marks are logos or commercial phrases (slogans).

If a trade mark is constituted of a surname, it does not respond to a specific or different rule. However, the trade mark is valid provided it does not cause a prejudice to a person that bears the surname at issue.

To obtain the revocation of the trade mark the latter would have to prove that the trade mark is identical or highly similar to its name, that it leads to an association in the mind of the public between the trade mark and the individual as person, and that this causes them harm or prejudice. This is not easy to prove, but it could be established, notably when a trade mark reproduces the name of a celebrity without their authorisation.

The scope of trade mark rights are not limited by copyrights. However, similarly to surnames, a trade mark could be revoked if it infringes a third party’s copyrights.

A trade mark can be protected cumulatively by design law if the sign at issue meets the requirements for trade mark protection (distinctiveness, availability, etc) and those of design protection (individual character, novelty).

Personality and “image” rights interact with trade mark law where a trade mark reproduces the name or likeness of a person, especially a celebrity.

In such cases, the natural person can claim its rights on its name and image to obtain the revocation of the trade mark containing such attributes, and even damages.

The plaintiff would have to prove that the trade mark is identical or highly similar to its name or likeness without authorisation, that it leads to an association in the mind of the public between the trade mark and them as person, and that this causes them harm or prejudice.

Under French Law, and more specifically Article 1240 of the French Civil Code, unfair and parasitic competition can be claimed alternatively or jointly with a trade mark infringement action.

However, in order to be admissible, the claim for unfair competition must be based on facts that are different from those that base the trade mark infringement claim. That is, claimants can not invoke both grounds (trade mark infringement and unfair competition) simultaneously for the same facts.

A claim for unfair competition can also be brought up as an alternative to the claim for trade mark infringement especially when the claimant might fear that its trade mark rights would not be enforceable for some reason.

The most recent development in French trade mark law and practice is the reorganisation of trade mark law that occurred at the end of 2019. This has notably lead to new proceedings such as the revocation and invalidation proceedings before the French Trademarks Office, which prior to April 1st 2020 where the exclusive jurisdiction of the French Civil Courts.

This new exclusive jurisdiction awarded to the FTO will give rise to a new type of case law on revocation and invalidation matters.

There are specific rules as regards liability in the frame of trade mark infringements on the internet.

The French Statute LCEN of 21 June 2004 (Loi pour la confiance en l’économie numérique) classifies different types of actors and their respective level of liability, from highest level of responsibility to lowest: the publisher of the content, the host of the site, the service provider.

As regards internet service providers in particular they may be required to block counterfeiting contents if actions against the publishers and hosts were unsuccessful.

There are no special rules in France regarding trade marks used in business.