Industrial Property Law

In accordance with Article L. 712-1, paragraph 2, of the Intellectual Property Code, the registration is in effect from the date of filing of the application for a period of ten years, and is indefinitely renewable. In the event of renewal, the new ten-year period shall run from the day following the date of expiration of the registration. The right to the trademark can be renewed indefinitely, an …

Renewal of registration

In accordance with Article L. 712-1, paragraph 2, of the Intellectual Property Code, the registration is in effect from the date of filing of the application for a period of ten years, and is indefinitely renewable. In the event of renewal, the new ten-year period shall run from the day following the date of expiration of the registration. The right to the trademark can be renewed indefinitely, and can therefore be perpetual. As soon as the owner of a trademark provides proof of the receipt of the declaration of intent to renew from the INPI, his interest in bringing proceedings cannot be challenged for the protection of his trademark rights . Renewal may concern all of the goods or services designated at the time of filing, or only some of them. The INPI informs the owner of the trademark of the expiration of the registration, at the latest six months before it lapses. Failure to provide such information has no effect on the expiry of the trademark (Art. R. 712-24 IP Code).

The renewal declaration is subject to the conditions mentioned in Article R. 712-24 of the Intellectual Property Code, which are not acceptable. It must be submitted within the time-limit of one year immediately preceding the date of expiry of the registration, be accompanied by proof of payment of the prescribed fee, include the designation of the mark to be renewed and be made by the owner entered in the National Register of Trademarks on the date of the declaration, or by the authorized person. The examination of the renewal application is not subject to the compliance checks relating to the validity or availability of the mark. Simply paying the fee cannot be considered as a request for renewal of a trademark application , but constitutes a condition for the validity of such renewal. Consequently, a renewal made without payment of the corresponding fee is only valid as a first filing .

The INPI gives its ruling within a time-limit of six months from the filing of the renewal application. This time-limit is interrupted in case of notification of irregularity ( Article R. 712-24-1 IP Code). In the absence of an express judgment within this time-limit, the application for renewal is deemed to be rejected ( Art. R. 712-24-2 IP Code).

In case of non-compliance of the renewal declaration, the applicant is notified by the INPI which grants a time-limit to regularize the situation or to make any observations ( Art. R. 712-24, al. 5, IP Code). The declaration may still be presented and the fee paid within an additional time-limit of six months from the day following the expiry of the registration, subject to payment of an additional fee ( Art. L. 712-24, 1° IP Code). The INPI cannot reject an application for renewal of an irregular registration filed three days before the expiration of the grace period without notifying the applicant of a time-limit for regularization .

Prior to the PACTE Law , renewal of a trademark was possible in advance, when a new application was filed for both a modification of the mark and an extension of the list of goods and services covered by the registration . This procedure, which was set forth in Article R. 712-25 of the Intellectual Property Code, allowed undertakings to change their trademark while continuing to benefit from the prior use attached to the common part of the older trademark. The PACTE Law ended this renewal procedure. Any modification of the mark or any extension of the wording must be the subject of a new application ( Article L. 712-9 IP Code). In the case of an extension of the wording, the filing will be considered as a renewal for initially protected or similar goods or services, and as a new filing for new goods and services. When the rights to a trademark have been acquired by an initial filing and maintained by the effect of an uninterrupted series of renewals, the omission of the designation of goods at the time of publication of a trademark renewal does not affect the property right acquired by the filing .

Cass. com. 7 December 2010, LawLex202200000049JBJ.

Cass. com, 24 March 1998, LawLex202200000008JBJ.

Cass. com, 18 June 1996, LawLex202200001973JBJ.

Cass. com, 23 March 2010, LawLex202200000005JBJ.

Law No 2019-486 of 22 May 2019 on the growth and transformation of undertakings.

Cass. com. 12 February 2008, LawLex202200000048JBJ.

Cass. com. 3 October 1995, LawLex202200001963JBJ.

Industrial Property Law

75. Renewal of registration

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Les notions juridiques connexes

75. Renewal of registration

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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au contenu exclusif Livv – juristes d’entreprise