Trademark registration

Updated: 12/09/2022

Trademark applications are made exclusively online, directly on the offices' websites: a French trademark is filed on the INPI website and we go to the EUIPO website to register a European trademark.

Taxes

To date (September 2022), the INPI fees are 190 € for 1 class and 40 € per additional class. The French trademark covers all DOM-TOM, except for French Polynesia, for which a surcharge of 60 € is required.

The EUIPO fees (for filing a European Union trademark) are 850 € for 1 class, 900 € for 2 classes and 150 € for each additional class.

Thus, for a registration in 3 classes, it is necessary to count 270 € of taxes at the INPI and 1050 € of taxes for a European trademark.

Holder

The owner of a trademark can be a natural person or a legal entity (an association, a company, a public institution). As the micro-enterprise does not have a legal personality, the trademark will be held by the micro-entrepreneur, in his personal name.

The French trademark can also be registered in the name and on behalf of a company in the process of being formed, if it is soon to be created. In this case, it is necessary to regularize thereafter with the INPI by a registration indicating that the company was indeed created, or on the contrary that it was never created.

Agent

The applicant may be represented by an agent in this process, in particular by an attorney professional such as an Industrial Property Attorney. The latter masters all the stages of filing, but also the preparatory phases to ensure the distinctiveness and availability of his trademark. It is recommended that you entrust your trademark registration project to him, in order to secure your rights as much as possible over the long term.

Sign

If the brand has a logo (see our article "to register a logo or not?If you want to use a logo (e.g., a logo that is "small"), it must respect a certain size, weight and file type. In any case, prefer a good resolution to a tiny logo, which will not be optimized for publication.

Note that many applicants try to protect several variants of the same trademark in the same filing, by submitting a logo in several colors for example, or a word trademark with several slogans... However, the INPI protects exactly what you communicate to it. It is therefore advisable to send the logo as you use it, with the right colors, the right resolution, the right verbal elements if necessary...

It should be noted that you will be obliged, thereafter, to use the trademark in this form in order to validate its registration. Therefore, if a trademark has been registered in several forms in the same application, all these forms must be used together, which is never the case. The rule is therefore: one logo = one application. One name = one application.

Products and services

At the time of filing, Offices always offer wording "help" in the sense that they provide pre-prepared lists of goods and services, which are best avoided. For more information, see on classes of goods and services.

It is therefore necessary to write "by hand" one's own wording, in free text, in order to retranscribe one's activity in one's trademark and, above all, to protect oneself well. This requires a precise drafting technique and a good knowledge of the uses of the offices.

It is also important to choose the right classes of products and/or services. Indeed, if you make a mistake and some products or services actually belong to another class that you did not target in the filing, the INPI will refuse to add it. You will have to proceed with a new filing, which will entail new fees (INPI does not refund the fees if the filing is not good).

Number

Once the application has been filed, the Office shall transmit a proof of filing and assign a number to the mark. In France and in the European Union, the filing number and the registration number are identical (this has not always been the case, and is still not the case in a number of countries around the world).

Review

The Office in question then proceeds to examine the mark and checks its admissibility. If the mark is not sufficiently distinctive or if the wording is not sufficiently precise or is not properly classified, the Office sends a notification of irregularity to the proprietor.

Note that the INPI and theEUIPO do not check whether the brand is available or not. This is why so many identical or very similar trademarks coexist on the registers. It is up to the owner to act to defend his rights, which happens in almost 1 out of 4 cases. To avoid such problems, we strongly recommend that you carry out a prior art search beforehand.

Publication and registration

Once the objections have been raised, the trademark is published and then registered a few months later, after granting third parties with earlier rights a period of opposition.

In general, the whole procedure takes about 5 to 6 months in France, and between 4 and 6 months in the European Union. The protection of the trademark is always retroactive to the day of filing.

After publication of the trademark, it is common for the owner to receive a document in the mail from a company with a very "official" sounding name, such as "european trademark organization". This company asks for the payment of a relatively high fee for the publication of the trademark on its registers. This is a common scam, which should not be followed, as we explain in more detail in our blog post on mail scams.