How to respond to an INPI notification?
Sometimes the INPI (Institut National de la Propriété Industrielle), after filing a trademark, sends a notification to the applicant. In most cases, the examiner considers that the trademark application must be modified in order to be registered. The examiner may propose solutions to the applicant, but is not obliged to do so. It can also be a total or partial refusal, based on the trademark itself, which would be considered descriptive, or contrary to public policy.
The applicant then has a period of one month to reply to the notification. In some cases, failure to reply will result in the rejection of the application for registration. If the application is rejected, the INPI does not refund the filing fees paid.
You have received a notification of irregularity from the INPI and do not know how to respond. Learn how to recognise the different types of irregularities detected by the INPI and how to deal with them.
The different types of notifications
In one and the same notification, the trademark examiner may reject the trademark for certain services and request clarification for others. The different types of notification can therefore be combined.
Rejection of the trademark by the INPI
Rejection for descriptiveness
The examiner may find that the mark is too descriptive to be registered. This is because a mark must be distinctive, i.e. it must not describe the goods/services covered by the mark or any of their characteristics. Learn more about distinctiveness and descriptiveness.
Here are examples of trademarks rejected in the last two years by the INPI: L'ŒUF DE NOS COMPAGNES (for eggs in class 29), DU VIGNERON AU PARTICULIER (for wine in class 33), louerLinge (for linen and linen distribution services), SALON DU GOUT ET DU VIN ILE DE RE (for wine and the organisation of fairs)
The examiner may well reject a mark only partially because it is descriptive of some goods but not of others. That is a partial rejection.
Rejection for breach of public order
It is also impossible to register a trademark that would undermine public order. This is the case, for example, of insults, racist or anti-Semitic remarks... It also makes it possible to regulate certain abuses following current events. For example, the INPI had rejected numerous registrations of the brand name JE SUIS PARIS following the attack on the Bataclan in 2015, made by opportunistic people seeking to appropriate the name commercially. See our article on the subject.
Notifications of material irregularities
When the INPI finds that the application for registration of a trademark contains one or more irregularities, it sends the applicant (or his representative) a notification of material irregularity. This notification may take several forms:
- Ex officio notificationIn this case, the INPI proposes a solution for regularization to the depositor. In the absence of a response from the INPI within one month, the proposal is deemed to have been accepted by the applicant. The INPI will therefore automatically rectify the application and continue its examination of the trademark.
- The classic irregularity notification. The INPI will here invite the applicant to proceed himself to the regularization. If the applicant accepts the INPI's proposals for notification, he will have to send 3 signed copies of the amended application for registration and attach any missing documents. If the applicant does not respond to the INPI notification within one month, his application will be rejected.
It is therefore essential that you respond to the notifications sent to you by the INPI. Silence may mean the rejection of your request and the loss of the sums involved. To save time, you can request an extension of the deadline by simple letter. This will give you an extra month to present your arguments.
It should also be made clear that regularisation of the file may not have the effect of extending the scope of the application. You cannot therefore take advantage of this to change your wording by adding goods and services. For this reason, in particular, you should be very careful when drafting your wording. !
How to respond to the INPI's notifications of material irregularities?
Today, most filings are made electronically. However, it is still possible, for a higher fee, to file in paper format. The INPI considers that applications not filed on the CERFA trademark application form...are illegible. The INPI also refuses deposits submitted in "landscape" format, or those whose handwriting is not decipherable.
It is therefore recommended that you apply for your trademark online. If you prefer the written form, please fill in the appropriate form legibly (e.g. in all capital letters).
Identification of the depositor
The applicant may be a natural person or a legal entity, provided that it has legal personality. The filing may be made for a company in the process of formation. The application form should then mention: "the name of the person [Ms ABC] acting on behalf of the company [XYZ] under formation". See our article on the subject.
In case of ambiguity about the depositor, the INPI will send a notification of irregularity. This is the case if the filing mentions :
2 rue de Paris... "
Incomplete or inaccurate address
The INPI may send a notification of irregularity if the address does not include a number or street name. The applicant may then complete his address or confirm that it does not include a street number. The problem is frequent with applications that only include a P.O. Box.
It is therefore recommended to give a complete and precise address to avoid any delay in the processing of the trademark application.
In the case of online filing, the signature process may not be successful. The applicant will then receive an email from the INPI informing him/her of the problem. Fortunately, it is not necessary to repeat the whole procedure: simply send the handwritten signature to the INPI, together with the surname and first name of the signatory. But if the irregularity is not corrected, the application will be rejected entirely.
Sometimes the applicant will also have to specify his status as a signatory. This is the case in particular when the deposit is made for a legal entity. In order to be able to engage the liability of the latter, the depositor must be a manager, partner or director. If the deposit is made for a local authority, the signatory must be the mayor or the president of the council.
Irregularity linked to the absence of a representative
In some cases, the applicant must be represented by a qualified agent. This is the case, when the applicant is not domiciled in France (or in the European Union). To continue the trademark registration procedure, the applicant must choose an agentwho will take care of the filing.
The representative will send a power of attorney signed by the applicant to the INPI, allowing the procedure to continue.
Errors in the brand description
Quite often, applicants check the wrong box when filling out the application. For example, the INPI receives forms where the boxes "mark with a hologram" or "three-dimensional mark" are ticked, even though the mark appears to be classic. The INPI then sends a notification ex officio, asking the applicant to confirm or not to confirm the specific character of his trademark.
The INPI can also send a notification of irregularity if the trademark is represented in black and white, while the applicant mentions the presence of colors.
If you wish to make a "classic" application, it is therefore recommended that you do not fill in the "description" part of the trademark. Indeed, applicants generally fill in this part incorrectly and the INPI is obliged to send a notification to clarify this point.
Irregularities in wording
Since 2012, the INPI has been rejecting wording that is too imprecise, particularly those referring to class titles. This is the case, for example, of the class heading of class 7 "Machinery", or that of class 40 "Treatment of materials". Indeed, these overly broad wordings may include goods or services from other classes. In this case, the INPI will notify the holder of the irregularity and ask him/her for clarification.
Furthermore, the INPI refuses certain expressions ("including", "in particular", "notably") because they do not really specify the scope of the protection requested (expressions such as "namely", which are more restrictive, are preferred). The examiner will propose an alternative wording, allowing for a clear list of the products concerned. The applicant may or may not accept this new wording. He may also propose alternative wording, provided that the scope of his original filing is not extended.
It often happens that regularisation leads to the addition of one or more classes of goods and/or services. This is the case when the applicant had mentioned goods or services in the wrong class, or when the accuracy of the wording led to mentioning a good or service included in another class. In this case, the applicant will have to pay additional fees (if the application exceeds 3 classes).
Other notifications of irregularities
The INPI may also report other irregularities in the application. Sometimes the problem is related to a priority application. In this case, the applicant will be invited to attach missing documents. Other difficulties may arise during the renewal of the trademark or in the case of a divisional application.
In any event, it is fundamental to respond to the INPI within the set deadlines. You can also consult a professional representativeThe INPI is used to these notifications and can advise you on the procedure to follow and answer for you at the INPI.