Industrial Property Law

The first harmonization directive designed to address the disparities which may impede the free movement of goods and the freedom to provide services in the Common Market (recital 1), Directive No 89/104 of 21 December 1988  laid down the common rules on the signs which may constitute a trademark ( Article 2), the grounds for refusal or invalidity of registration of a trademark (Articles 3 and 4), …

Harmonization of trademark law within the EU

The purpose of the Trademark Law Treaty, concluded in Geneva on 27 October 1994 within the context of the World Intellectual Property Organization (WIPO), is to standardize, simplify and streamline national and regional procedures for the application, post-registration change and renewal of trademarks. It sets maximum formal requirements to encourage States to make their procedures less time-consuming, less costly and more predictable. The Trademark Law Treaty was ratified by France in 2006  and entered into force on 15 December 2006.

The Singapore Treaty of 27 March 2006  , which entered into force in 2009, revises the Trademark Law Treaty, under the auspices of the World Intellectual Property Organization (WIPO), to extend its scope to all types of marks that may be registered under the law of a contracting party including non-traditional visible marks, such as holograms, three-dimensional marks, color marks, position marks and movement marks, as well as sound, smell, taste and touch marks. The Singapore Treaty also requires national offices to provide for relief in the event of non-compliance with deadlines. The Law on the Modernization of the Economy of 4 August 2008 incorporated these provisions into Article L. 714-7, paragraph 3, of the Intellectual Property Code.

Law No 2006-788 of 5 July 2006, OJ 6 July 2006

Singapore Treaty on the Law of Trademarks (STLT) of 27 March 2006.

Trademark Law Treaty (TLT)

The Nice Agreement of 1957  established the international classification system for goods and services in order to simplify national and international registrations. The Vienna Agreement of 12 June 1973  , amended in 1985, institutes an international classification of the figurative elements of trademarks, which facilitates prior art searches.

Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks of 12 June 1973.

Nice and Vienna agreements

The Madrid Agreement  concluded in 1891 by certain member countries of the Paris Convention who wished to widen the scope of the rules agreed upon  in the convention, established the international registration of trademarks. It was adapted by the Protocol relating to the Madrid Agreement of 1989 . Any member country of the Paris Convention may accede to the Madrid Agreement and/or the Madrid Protocol.

The Madrid Agreement and the Protocol relating to the Madrid Agreement are intended to relieve trademark holders of having to make multiple filings or registrations in each of the countries of the Paris Convention union. The national office that receives the application for the filing of an international trademark transmits it to the International Bureau of Intellectual Property referred to in the Convention establishing the World Intellectual Property Organization (WIPO) (Art. 1(2)) of the Madrid Agreement), which carries out a formal check and then handles the formalities (Art. 3). The international registration extends to all designated contracting countries ( Art. 4). It exempts from all formalities in the signatory States. It can only be applied for in respect of a mark which has already been registered with the national office of the contracting country ( Art. 3 (1)). The designated contracting States carry out a substantive check on the validity of the mark. Any question of substance, such as whether the mark qualifies for protection or conflicts with a mark previously registered in a specific Contracting Party, is a matter for judgment by each designated Contracting Party under the applicable national law. States make a declaration of grant or refusal of protection (Art. 6). The registration is valid for twenty years, renewable for a period of twenty years (Art. 7). The European Union acceded to the Protocol relating to the Madrid Agreement by a Council judgment of 27 October 2003 .

Madrid Agreement Concerning the International Registration of Marks of 14 April 1891.

Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Regulation No 1992/2003 of 27 October 2003 amending Regulation (EC) No 40/94 on the Community trade mark.

Madrid Agreement

The trademark allows its owners, in their dealings with customers, to distinguish their products or services from those of their competitors by means of a sign. By registering, the manufacturer or trader obtains the right to prohibit competitors from using the registered trademark, and can take action for infringement against anyone who uses the trademark without authorization. As a tool for building customer loyalty, and as such a valuable asset, the trademark differs from the other identifying signs used in business life, which are the brand name, the trade name, the company name and the domain name. While a trademark distinguishes goods and services from those of a competitor, a sign identifies an industrial or commercial establishment. The trade name refers to an undertaking or a business, while the corporate name designates a legal entity, and the domain name an internet site. The trademark also differs from indications or appellations of origin, whose function is to certify the quality, reputation, or other characteristics of a product linked to a geographical area.

Initially, the Law of 28 July 1824 , which regulated trade names affixed to products (current Articles L. 413-4 and L. 413-5 of the Consumer Code), applied de facto to trademarks consisting of a trade name and affixed to products. Subsequently, the Law of 23 June 1857 , adopted in the context of the industrial revolution, gave trademarks an autonomous status and recognized for the first time the right of traders in the trademarks they used. It provided notably for the acquisition of the ownership of the sign by the first use.

The modernization of trademark law came about with the Law of 31 December 1964 , which, inspired by international law, imposed filing as a means of acquiring ownership of a trademark, although owners of a trademark in use had a time-limit of 5 years to do so . The law instituted the obligation of a prior examination of the substantive conditions of validity of the title by the Administration  and created the system of revocation for failure to use the sign for five years .

In order to correct the deficiencies of the 1964 law and to further bring national law into conformity with European and international law, the French legislature adopted Law No 91-7 of 4 January 1991  , which transposed Directive No 89/104 of 21 December 1988 . The law notably increased the penalties for infringement of intellectual property rights. The provisions of the 1991 law were codified by Law No 92-597 of 1 July 1992 in Book VII of the Commercial Code, which was amended by the Law of 18 December 1996  to take account of the provisions of the Agreement establishing the World Trade Organization (WTO) (current Articles L. 711-2, 8°, L. 712-11 and L. 712-12 of the French Intellectual Property Code). The Law of 29 October 2007  relating to the suppression of intellectual property infringements transposed Directive No 2004/48/EC of 29 April 2004  and the Law of 4 August 2008  confirmed the exclusive jurisdiction of specialized judicial courts (tribunaux judiciaires) in matters concerning litigation relating to certain intellectual property rights . Finally, Law No 2014-315 of 11 March 2014  strengthened the legislative framework for the fight against IP infringement.

In the wake of these various changes, trademark law underwent a major reform with the adoption, on 16 December 2015  , of the Trademark Package, which the PACTE Law of 22 May 2019  authorized the Government to adopt by way of ordinance. Pursuant to that law, the Ordinance of 13 November 2019  modernizes and improves the trademark protection system. From now on, the term “trade or commercial mark” ("marque de fabrique ou de commerce")"  will no longer be used, but rather “trademark or service mark”, a concept better able to illustrate the function of the trademark. An important innovation is that Article L. 711-1 of the Intellectual Property Code no longer requires a graphic representation of the trademark when it is filed, but a representation that must allow any person to clearly and precisely determine the subject matter of the protection, thus opening the way to audio or animated signs. Articles L. 711-2 and L. 711-3 of the Intellectual Property Code now distinguish between absolute grounds ( Art. L. 711-2 IP Code) and relative grounds ( Art. L. 711-3 IP Code) for refusing to register or cancel a trademark. The concept of infringement of the prior trademark is clarified ( Article L. 711-3 IP Code) and the illustrative list of signs that may infringe the trademark has been enlarged. The ordinance extends the enforcement procedure (Art. L. 712-4 and L. 712-4-1 IP Code). The content and limits of the protection attached to the right conferred by the trademark are clarified (Art. L. 713-2 to L. 713-3-3), and the rules governing collective marks (Art. L. 715-6 to L. 715-10) and collective certification marks, renamed guarantee marks (Art. L. 715-1 to L. 715-5) have also been amended. The ordinance establishes an administrative procedure for applications for invalidation and revocation of trademarks before the National Institute of Intellectual Property (Articles L. 716-1 to L. 716-3). It provides for new grounds for inadmissibility of applications for invalidity ( Art. L. 716-2-3) and for infringement ( L. 716-4-3). The provisions of the ordinance apply only to trademark applications filed after its entry into force.

Trademark law is now included in Book VII of the Intellectual Property Code, in Articles L. 711-1 et seq. and R. 712-1 et seq.

Law of 28 July 1824 relating to alterations or assumptions of names on manufactured products, OJ of 20 August 1944.

Law of 23 June 1857 on factory and trade marks.

Directive No 2004/48/EC of 29 April 2004 on the enforcement of intellectual property rights, OJEU L 157 of 30 April 2004.

Law No 2008-776 of 4 August 2008 on the modernization of the economy, OJ No 0181 of 5 August 2008.

Tribunaux judiciaire since Law No 2019-22 of 30 August 2019: Art. D-211-6-2 of the Judicial Organization Code.

Law No 2014-315 of 11 March 2014 reinforcing the fight against intellectual property infringement, OJ No 0060 of 12 March 2014.

Directive No 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks, OJ L 336 of 23 December 2015, and Regulation No 2015-2424 of 16 December 2015, OJ L 341 of 24 December 2015.

Law No 2019-486 of 22 May 2019 on the growth and transformation of undertakings, OJ No 0119 of 23 May 2019.

Ordinance No 2019-1169 of 13 November 2019 on trademarks or service marks, OJ No. 0264 of 14 November 2019; Decree No 2019-1316 of 9 December 2019.

The “marque de commerce” referred to the mark affixed by a merchant to designate products that he did not manufacture, but for which he ensures the distribution. Article 92.2 of the General Tax Code provided for a different tax regime for “marques de fabrique and marques de commerce”.

Law No 64-1360 of 31 December 1964 on trade names, trade or service marks, OJ No. 0001 of 1 January 1965.

Law No 64-1360 of 31 December 1964, Art. 4 (since repealed)

Law No 64-1360 of 31 December 1964, Art. 8 (since repealed)

Law No 64-1360 of 31 December 1964, Art. 11 (since repealed)

Law No 91-7 of 4 January 1991 on trade names or trade marks and service marks, OJ No 0005 of 6 January 1991

Directive No 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trade marks, OJ L 40 of 11 February 1989.

Law No 96-1106 of 18 December 1996 amending the Intellectual Property Code in application of the agreement establishing the World Trade Organization, OJ 295 of 19 December 1996

Law No 2007-1544 of 29 October 2007 on the prevention of IP infringement, OJ No 252 of 30 October 2007.

From "trade and commercial mark" to "product or service mark"

Marque de fabrique et de commerce (Trade and commercial mark)

The introduction of the European trademark meets the objective set out in Article 118(1) TFEU  for the European Parliament and the Council to establish measures relating to the creation of European titles in order to ensure uniform protection of intellectual property rights in the EU, and to set up centralized authorization, coordination and control systems at EU level.

The first step in the creation of the Community trademark was Regulation No 40/94 of 20 December 1993 , which came into force on 15 March 1994. It was followed by six other regulations, which were repealed by Regulation No 207/2009 of 26 February 2009 , which codified the law in its current settled form.

To take into account the changes brought about by the Trademark Package, Regulation No 2017/1001 of 14 June 2017  proceeds, for the sake of clarity, to a new codification of the existing provisions on the Community trademark, which becomes the European Union trademark. The Office for Harmonization in the Internal Market (OHIM) is replaced by the European Union Intellectual Property Office (EUIPO). The Regulation No 2017/1001 is further supported by implementing regulations. Implementing Regulation No 2018/626 of 5 March 2018  specifies the procedures for applying for and transferring an EU trademark and for the international registration of trademarks, and covers collective marks and EU certification marks. Delegated Regulation No 2018/625 of 5 March 2018  sets out various aspects of the scheme such as opposition proceedings and proof of use of an earlier mark, amendment of the trademark application, applications for revocation or invalidity, or transfer.

The European Union trademark gives its owner a property right in all the territories of the Member States of the Union, allowing him/her to prohibit the use of his/her trademark in the Member States. It has equal effect throughout the EU (Reg. 2017/1001, Art. 1(2)). It coexists with national trademarks, as a trademark can be protected, at the choice of its owner, by a European and/or national title (recitals 7 and 8). Any natural or legal person, national and domiciled or established in a Member State of the European Union may be the owner of a European Union trademark ( Art. 5). Like the national trademark, the European Union trademark may cover any sign, provided that it is capable of distinguishing the goods or services of one undertaking from those of other undertakings, and that it can be represented in the register of trademarks of the European Union in such a way as to enable the competent authorities and the public to determine precisely and clearly the subject matter for which protection is conferred on the proprietor (Art. 4).  The term of registration of the EU trademark is ten years from the date of filing of the application, renewable for periods of ten years (Art. 52).

Treaty on the Functioning of the European Union (TFEU) of 25 March 1957, OJ No C 326 of 26 October 2012.

Regulation No 40/94 of 20 December 1993, OJ L 11 of 14 January 1994.

Regulation No 207/2009 of 26 February 2009 on the Community trade mark, OJ L 78 of 24 March 2009.

Regulation No 2017/1001 of 14 June 2017, OJ L 154 of 16 June 2017, replacing Council Regulation No 207/2009 of 26 February 2009 on the Community trade mark (OJ L 78 of 24 March 2009), as amended by Regulation No 2015/2424 of 16 December 2015 (OJ L 341 of 24 December 2015).

Regulation No. 2018/626 of 5 March No 2018, laying down detailed rules for the implementation of certain provisions of Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Implementing Regulation (EU) No 2017/1431, OJ L 104/37 of 24 April 2018.

Delegated Regulation No 2018/625 of 5 March 2018 supplementing Regulation (EU) 2017/1001 of the European Parliament and of the Council on the European Union trade mark, and repealing Delegated Regulation (EU) No 2017/1430, OJ L 104/1 of 24 April 2018.

European Union trademark (EUTM)

The Paris Convention for the Protection of Industrial Property, adopted on 20 March 1883  lays the foundations of international trademark law. Article 2 of the Convention establishes the principle of national treatment, according to which each member country must grant the nationals of other member countries the same protection as its own nationals. It provides for a right of priority for the applicant of a trademark in a member country to file his trademark in another member country, which can be exercised within a time-limit of six months. By virtue of this right of priority, the second filing will be considered as having been made on the date of the first (Art. 4), and will therefore have priority over applications filed in the meantime by other persons. According to Article 6 of the Paris Convention, when a trademark is duly registered in the country of origin, it must, upon request, be accepted for filing and protected as such in the other contracting States. This principle is subject to certain reservations. In particular, the mark must not infringe acquired rights, must not be devoid of distinctive character, or must not be contrary to morality or public policy. Registration must be refused or invalidated if the mark constitutes a reproduction, imitation or translation of well-known marks ( Art. 6 bis), or marks representing State emblems, coats of arms, flags and other emblems, abbreviations or names of certain intergovernmental organizations ( Art. 6 ter).

Convention de Paris pour la protection de la propriété industrielle of 10 May 1883.

Paris Convention

The first harmonization directive designed to address the disparities which may impede the free movement of goods and the freedom to provide services in the Common Market (recital 1), Directive No 89/104 of 21 December 1988  laid down the common rules on the signs which may constitute a trademark ( Article 2), the grounds for refusal or invalidity of registration of a trademark (Articles 3 and 4), and the rights conferred by the trademark (Article 5). Member States remained free to regulate the procedural aspects related to registration, revocation or invalidity of trademarks acquired through registration (recital 6). Directive No 2008/95 of 22 October 2008 , which repealed the the earlier directive of 21 December 1988 and re-codified it in accordance with the law, continued the process of ensuring that registered trademarks enjoy the same protection under the legal systems of all the Member States, in order to facilitate the free movement of goods and services .

Adopted by the European Parliament on 15 December 2015, the Trademark Package  is the latest reform of trademark law and recasts the EU's rules to facilitate the acquisition and protection of trademarks for the benefit of the growth and competitiveness of European undertakings (Directive No 2015/2436, recital 8).

- to implement further harmonization of laws and practices relating to the registration and protection of national trademarks;

- to modernize the trademark system throughout the EU and adapt it to the internet era (recital 6).

The directive applies to every trade mark in respect of goods or services which is the subject  of registration or of an application for registration in a Member State  as an individual trade mark, a guarantee or certification mark or a  collective mark (Art. 1). It does not cover rights acquired through use of the trademark (recital 11). It radically reforms trademark law, in particular by abolishing the condition of graphic representation for the registration of a sign (Art. 3), and by amending the financial terms of filing and in particular the reduction of the cost of filing trademarks for a single class (Art. 42). The directive revises the system of collective and guarantee marks (Art. 27 et seq.), extends the opposition procedure (Art. 43 and 44), creates a new administrative procedure for invalidity and revocation (Art. 45), and strengthens the fight against infringements (Art. 17 and 18). Member States had until 14 January 2019 to transpose the directive, except for the implementation of the revocation or invalidity procedure provided for in Article 45, for which Member States had until 14 January 2023 (Article 54). 

The directive contains provisions that are very similar to the EU Trademark Regulation of 14 June 2017. The General Court and Court of Justice of the European Union have handed down numerous judgments based on this regulation in the context of appeals against the judgments of OHIM (which became EUIPO on 23 March 2016). Although the interpretations in those judgments are not binding on national courts, they do shed light on certain provisions of the directive.

Directive No 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks.

Directive No 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trademarks, OJ L 299-25 of 8 November 2008, which repeals and replaces Directive No 89/104 of 21 December 1988, OJ L 040 of 1 February 1989.

Directive No 2008/95 of 22 October 2008, recital 10.

Directive No 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trademarks, O.J. L 336, Dec. 23, 2015; Regulation No. 2015/2424 of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No. 2868/95 implementing Council Regulation (EC) No. 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), O.J. L 341 of 24 December 2015.

The TRIPS Agreement of 15 April 1994  adopted in the context of the establishment of the World Trade Organization, establishes a minimum system of trademark law at the international level, with the objective of promoting “effective and adequate protection of intellectual property rights”, and ensuring “that measures and procedures to enforce intellectual property rights do not themselves become barriers to legitimate trade” . It incorporates the main substantive provisions of the Paris Convention by default, which become binding on member countries that are parties to the TRIPS Agreement, and are reinforced by it.

Article 15 of the TRIPS Agreement establishes the principle that any visually perceptible sign capable of distinguishing the goods or services of one undertaking from those of other undertakings may be registered as a trademark, without the need for actual use. The owner of a registered trademark is entitled to prevent third parties from using, without his consent, identical or similar signs for goods or services identical or similar to those for which the trademark is registered, if such use would be likely to cause confusion. The agreement also protects well-known trademarks (Art. 16(2) and 16(3). Initial registration is for a period of at least seven years, renewable for the same period indefinitely (Art. 18). The trademark may be cancelled for non-use after an uninterrupted period of three years of non-use (Art. 19). The conditions of licensing and assignments of trademarks are set out in Article 21.

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), annexed to the Marrakesh Convention establishing the WTO concluded on 15 April 1994, Annex 1 C.

Industrial Property Law

24. Harmonization of trademark law within the EU

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Les notions juridiques connexes

24. Harmonization of trademark law within the EU

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Les notions juridiques connexes

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