Territoriality in trademark law

Principle: a trademark is valid in only one territory

One brand = one country

Unlike other intellectual property rights, trademark law has no extraterritorial effect: a French trademark will only be protected on French territory. It cannot be opposed to a competitor who uses the same name abroad. As an anteriority, it is only valid in France.

In addition, each Office will examine the trademark application according to its own rules. The registration of a trademark in one State does not affect the other Offices. Your trademark can thus be rejected in England, without you being able to argue by presenting the French registration document.

The special case of regional brands

It is possible to register your trademark in a number of countries. This makes it possible to benefit from a single title valid in a larger territory. The advantage lies in their price A regional trademark costs much less than a registration in each of the countries covered.

This is the case of the European Union trademark, which provides protection in all member states (28 countries). It is not possible to choose the countries in which the trademark will take effect: it is valid for the whole of the EU.

Another example is the OAPI trademark, which is registered with the African Intellectual Property Organization. This trademark is valid in the 17 African countries that are members of this system (Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Côte d'Ivoire, Gabon, Guinea, Guinea Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal and Togo).

Consequences of territoriality on the life of the brand :

Availability is assessed for each country

Prior art searches that you must carry out prior to filing must also respect this principle of territoriality. You must search country by country. It is therefore possible that the name you have chosen is available in France but not in Spain.

It can happen that the same product is sold under different brands in different countries. If there are sometimes marketing reasons behind this name change, the principle of territoriality is sometimes responsible. This is the case of Burger King in Australia. As the name is already used by a local fast-food chain, the American giant was forced to opt for another name in this country: Hungry Jack's.

No territorial limitations on trademark assignment

If you decide to assign your French trademark, be careful: territorial limitations (art. L.714-1 al. 1 CPI). Thus, a trademark cannot be transferred only for a region or a department. The same applies to the European Union trademark, which can only be assigned for the entire territory of the EU: it is forbidden to assign the trademark only for one or more Member States.

In order to be able to grant third parties rights to use your trademark with territorial limitations, you can conclude a trademark license. The licensee will be able to exploit the trademark in only part of the territory of the application.

Exceptions: some names are never available

Well-known trademarks enjoy extensive protection

In view of the principle of territoriality, the owner of a French trademark cannot oppose an application made in Italy if he does not have a trademark in that country. However, if his trademark is well-known (i.e. known by a large fraction of the public), he can enforce his rights abroad. Of course, judges are very demanding in their assessment of notoriety.

Fraudulent deposit may be punished

In case of fraudthe principle of territoriality no longer applies. This is particularly the case when there is usurpation. For example, when a third party is ahead of a trademark owner in another territory. The "Corona Extra" beer brand was about to enter the French market. A third party registered the trademark in France, with a view to reselling it to the real owner when the time came. Offices may sanction such practices.