The Dreyfus firm is a key player in the French intellectual property landscape. Specializing in trademark management, it supports its clients in all stages of protection, from registration to defense against counterfeiting. This article outlines the essential elements of French trademark regulations while highlighting Dreyfus’s role in this field.
A Strong Legal Framework for Trademarks
Legislative Foundations
In France, trademark protection is based on Law No. 91-7 of January 4, 1991, updated by Ordinance No. 2019-1169 and Decree No. 2019-1316. These reforms ensure alignment with European standards, facilitating trademark registration and management procedures.
An International Dimension
France is a party to several international conventions, including the 1883 Paris Convention and the 1994 TRIPS Agreement. It also participates in the Madrid systems for international trademark registration, ensuring protection beyond national borders.
Role of the INPI
The National Institute of Industrial Property (INPI) plays a central role by managing filings, oppositions, and invalidity actions. This institution ensures rigorous enforcement of trademark regulations, supporting innovation and brand integrity.
Trademark Registration and Management Process
Eligibility Requirements
Distinctiveness remains a cornerstone of trademark registrability. Recent case law highlights evolving consumer perception standards, particularly concerning basic English terms used in France (e.g., MySunbed, INPI, 27 May 2024). Meanwhile, decisions on deceptiveness emphasized the need for claimants to demonstrate misleading potential at the time of filing, rather than relying on post-registration evidence (INPI, 3 April 2024, NL 22-0199).
Non-traditional trademarks, such as holograms or sounds, are also accepted under specific technical conditions.
Unregistered Trademarks
French law does not recognize unregistered trademarks. However, well-known trademarks enjoy protection against misappropriation based on principles of unfair competition. Proving renown remains challenging, as it requires robust evidence such as prior judicial recognition or extensive consumer exposure (INPI, 12 July 2024, Immo Angels). Meanwhile, allegations of parasitic intent require clear links between the litgious trademark and a recognizable external reference, as demonstrated in the Cadault case (INPI, 29 April 2024).
Administrative Procedures
Trademark applications are submitted via the INPI’s online platform. While a prior search is not mandatory, it is highly recommended to prevent conflicts with existing rights.
Benefits of a Registered Trademark
- Legal Protection: A registered trademark provides a presumption of validity and enables legal action in cases of infringement.
- Ease of Management: Registration simplifies oppositions and cancellations while allowing the blocking of counterfeit product imports.
- Strengthened Identity: A well-protected trademark enhances brand recognition and competitive advantage.
Validity Period and Renewal
A trademark is valid for 10 years and can be renewed indefinitely. Failure to use a trademark for five consecutive years risks cancellation, but the INPI provides solutions to justify its use.
Recent decisions reflect the broad evidentiary approach adopted by the INPI. Undated documents such as marketing materials and screenshots, when evaluated collectively with dated items, have been deemed admissible (e.g., INPI, 2 May 2024, Bob dépannage!). This flexibility underscores the importance of maintaining detailed usage records.
Opposition and Litigation
Opposition
Any interested party can oppose a trademark application within two months of its publication. This procedure is crucial to protect pre-existing rights.
Cancellation Actions
Trademarks can be canceled on various grounds, such as lack of distinctiveness or bad faith registration. These mechanisms remain vital tools for preserving registry integrity.
New Perspectives: NFTs and Artificial Intelligence
With the emergence of NFTs and AI, new trademark challenges are arising. Businesses must adapt their trademark portfolios to cover these new technologies and anticipate the legal challenges they entail.
Dreyfus’s International Recognition of Excellence
Dreyfus law has earned widespread acclaim for its outstanding expertise in intellectual property law, consistently ranking among the best in the field:
- WTR1000 2024: Nathalie Dreyfus has been ranked among the top professionals in intellectual property law, reflecting her unparalleled expertise and commitment to client success.
- Legal 500: Nathalie Dreyfus was referenced in the 2023 edition for her innovative approach to trademark management and strategic advice.
- Who’s Who Legal Thought Leaders France 2024: Nathalie Dreyfus was distinguished in this prestigious report, highlighting her thought leadership and significant contributions to the field.
These prestigious accolades highlight the Dreyfus firm’s unwavering dedication to excellence, its commitment to delivering exceptional legal services, and its reputation as a trusted partner in protecting intellectual property rights.
Dreyfus’s Judicial and International Expertise
Founding and managing partner of Dreyfus Law Firm, Nathalie Dreyfus is an officially accredited judicial expert with the Paris Court of Appeal in trademark and design law, as well as with the Court of Cassation in trademark matters. Her recognized expertise extends internationally, as she is also an accredited expert with WIPO (World Intellectual Property Organization) in Geneva, where she issued 17 decisions in 2024, and with the Forum (USA). Her unique combination of judicial and international experience positions her as a leading authority in the field, providing unparalleled insights and solutions to complex intellectual property issues.
Conclusion
By combining local expertise with an international vision, Dreyfus law firm offers an innovative approach to protecting trademarks in a constantly evolving world. Whether through advisory services, management, or litigation, Dreyfus remains a trusted partner for companies looking to enhance their intangible assets.
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