After the filing of a trademark, several types of changes can occur: the scope of its protection has to be modified, the owner has moved or changed legal form, the trademark has been assigned... All this information must be transmitted to the INPI by means of an inscription.
What is an inscription?
A registration is a step carried out at the INPI via a paper form or online, depending on the desired procedure, and which allows the INPI to be notified of a change in relation to a trademark or other industrial property right.
How much does a registration cost?
The registration fee at the INPI is 27 € (November 2016), with a supplement of 52 € for the so-called "accelerated" procedure. Some registrations are free of charge (change of address, for example).
The different types of registration
Changes to the trademark as such
First of all, let us remember that it is impossible:
- to modify the sign (name and/or logo) that has been filed.
- to extend, after filing, the protection of the trademark by adding goods and/or services to the wording of the trademark.
The modifications that can be made are therefore limited, and are limited to the possibility of limiting the protection of the trademark by reducing the wording, or withdrawing/withdrawing it altogether.
Total or partial brand withdrawal
Withdrawal is when the mark has not yet been registered. It is possible to proceed to a total or partial withdrawal, i.e. to withdraw or specify some goods or services or to withdraw the entire trademark, which will therefore never be registered. This often occurs after filing, when the applicant has been contacted by the owner of an earlier trademark who believes that the new application infringes his rights. The latter then generally requests that some goods or services be withdrawn, or that the entire trademark be withdrawn if it is the entire wording that is prejudicial to him.
The total or partial renunciation of a trademark
A renunciation is when the changes are requested following the registration of the trademark. Renunciations are generally rarer than withdrawals.
The "administrative" changes
These are changes linked to practical information, generally about the trademark owner: change of address, change of company name, change of legal form (a SAS becomes a SA for example). It is important to report them to the INPI, particularly for the renewal of your trademarks. In the event of a change of address, if the INPI is not informed and you are not represented by a representative, you will never receive the renewal reminder letter. Furthermore, if the name of your company or its legal form has changed, the INPI will refuse to renew your trademarks with the new data without justification.
Changes in ownership or use of the trademark
Some of the changes are more far-reaching. These are assignments and licences of trademarks, as well as other less common acts such as mortgages, pledges or collateral. They must be registered with the INPI because only registration allows the act to be invoked against third parties. Thus, for example, liability for a fault committed by the beneficiary of a trademark license can only be raised if the deed has been brought to the knowledge of third parties through a registration procedure. Otherwise, the trademark owner is in principle liable.
How do I register a change?
All changes must be registered with the National Trademark Register. Some modifications can be made online via the INPI website (change of address, legal form, assignment, license...). Others must still be made through a form mailed to the INPI (such as withdrawal or waiver, for example). A Industrial Property Attorney can help you with all your registration procedures.