Foreign filers, opt for the constitution of a proxy!
The appointment of a representative is a mechanism for obtaining the registration of a trademark filed by a non-EU resident.
Indeed, our firm is increasingly solicited by people living outside the European Union. The latter have filed a French trademark application by their own means. The INPI has sent them a notification because French regulations require that the owner, or his representative, must be domiciled in the European Union. However, most of these applicants indicated an address in Asia, the United States, or Latin America, which was the reason for the INPI's refusal.
What do we do then? There is a simple solution: the constitution of an agent.
Registering a French trademark from a foreign country
A repository accessible to all
Anyone can, from anywhere in the world, register a French trademark via the INPI online portal.
When filing, it is necessary to indicate the contact details of the applicant. If the applicant is not domiciled in the European Union, this does not prevent the trademark application from being filed. It is possible to indicate an address in any country.
In the same section you can also enter the name and address of a proxy. The latter is in principle not obligatory, EXCEPT in very specific cases, in particular when the holder is not domiciled in the European Union.
The applicant or his representative must be domiciled in the European Union.
Yes, it is, Article R712-2 of the French Intellectual Property Code provides that "the deposit may be made personally by the applicant or by an agent having his domicile, registered office or place of business in a Member State of the European Union or in a State party to the Agreement on the European Economic Area"..
It is therefore mandatory that the applicant for a trademark be domiciled in France or in an EU or EEA country. Otherwise, he must appoint a representative, who must meet the same conditions.
Thus, a Chinese lawyer, who would be the agent in China for his Chinese client, cannot register a French trademark for him. He must use a European representative, notably a French one. On the other hand, a Spanish lawyer can validly register a French trademark for his American client, since his firm is domiciled in the European Union.
Appointing an agent, an effective means of validating the deposit
Why appoint a representative for your trademark application?
The INPI refuses to register trademarks registered by a proprietor domiciled outside the EU, if the latter does not have a representative in the European Union. The office sends a notification of refusal to the applicant, asking him to appoint a representative within a limited period of time. If the applicant does nothing, the registration of his trademark will be refused and the fees will be forfeited. Indeed, the INPI never reimburses the fees for an unsuccessful application.
The applicant must therefore contact a person authorised to represent him, who will proceed to appoint a representative.
Who can be a proxy?
Article R-712-2 cited above indicates that the agent must have the status of Industrial Property Counsel. The latter must be the holder of the specialty "trademarks, designs and models", obtained by passing an examination at the INPI after a minimum of 3 years of professional practice.
However, Article L422-4 of the Intellectual Property Code has broadened the number of persons who can be appointed as agents. Thus, it authorises French lawyers and companies established in the EU that are contractually bound to the applicant to act as agents. Similarly, European professionals authorized to represent their clients before the intellectual property office of their own country may be authorized to act as agents in France on an occasional basis. This is therefore particularly the case for European lawyers.
How do I make a Power of Attorney application?
In principle, the representative already has a professional account on the INPI website. Through the latter, he can "take control" of the trademark in question by applying for an attachment. The INPI then transfers the file to him, and he has access to the notification. The latter is deemed to be settled by the appointment of a representative, unless it relates to other elements, such as the content of the wording, the trade mark distinctiveness... In this case, these elements must be answered within the time allowed by the examiner.
If you are faced with this problem, our firm is at your disposal to act as your proxy for your depositand accompany you until the registration of your trademark :)
Photo credit : Oleg de Pexels