Registering a trade mark: the four choices that decide whether you keep it

Ownership of a trade mark is acquired by registration (article L. 712-1 of the French Intellectual Property Code). Not by use, not by entry in the commercial register, not by the domain name. Registration takes effect from the filing date, for ten years, renewable indefinitely.

What you buy is not the word. It is a monopoly bounded by two things, and only two: the sign filed, and the list of goods or services for which registration is sought — which article L. 712-2 requires to be set out in the application.

That list is the specification. It is the part of the form that takes the longest, the part nobody rereads, and the only one that is irreversible. Article L. 712-9 is explicit: any change to the sign or any extension of the list of goods and services requires a fresh application. A specification can be narrowed. It is never widened.

The consequence is expensive. A filing widened three years later is not the same title: it is a second title, taking its date from its own filing. The three years of priority cannot be recovered, and if someone has moved onto the ground left free in the meantime, they are ahead of you. It is the first point on which choosing the classes with whoever will defend the mark changes the outcome.

Goods and services are designated using an international nomenclature, the Nice Classification, which distributes them into numbered classes. The mark is worth only what is designated in it: that is the principle of speciality. Two businesses can carry the same name in two markets without getting in each other's way, and that is perfectly regular.

The classic mistake is to file for today's business. A software company files in class 42, a clothing brand in class 25, and the matter seems settled. Three questions are missing, always the same ones:

• What you will be selling in three years. The extension of the range, the ancillary service, the online shop often fall in a different class from the original product.
• What you do not sell but which looks like you. A competitor setting up in the neighbouring class owes you nothing if you have not designated it.
• What the wording chosen actually covers. A specification copied from a template does not describe your business; it describes the business it was written for.

The arithmetic is lopsided, and that is what makes the mistake avoidable: an extra class costs €40 at filing, whereas refiling four years later costs €190 and the loss of priority.

That is not an invitation to tick everything. An over-broad specification has its own price, and it is paid exactly five years later.

This is the most widespread misunderstanding, and the most expensive. Obtaining a registration does not mean the sign was available.

The INPI examines of its own motion the absolute grounds for refusal listed in article L. 711-2: the defects inherent in the sign itself. A sign devoid of distinctive character, a purely descriptive sign — one designating the kind, quality, intended purpose or origin of the product — a sign that has become customary, a bad-faith filing or a deceptive sign are all refused without anyone having to complain.

The relative grounds in article L. 711-3 — an identical or similar earlier mark, a company name, a trading name, a sign, a domain name, copyright — are not. It is for the holder of the earlier right to come forward: the office does not arbitrate between two businesses that have asked it for nothing.

Two practical consequences follow.

The search is on you. Checking for identical marks is free in the INPI's public databases and takes ten minutes. It is not enough: conflicts rarely concern identical signs, but similar signs designating similar goods. A similarity search run by the INPI starts at €50 — see the table below. It is the risk analysis, not the search itself, that calls for a lawyer.

The timetable for challenges is short, then long. The holder of an earlier right has two months from publication of the application to file an opposition with the INPI (article L. 712-4). It then has one further month to produce its statement of grounds and its evidence — provided, article R. 712-14 states, that it does not extend the scope of its opposition or rely on other earlier rights or other goods than those already relied on. The scope is therefore frozen in the second month, the reasoning in the third. After that, opposition is closed but invalidity remains available: the risk does not disappear, it changes counter and price.

INPI fees applicable as at 2 July 2026. Excluding professional fees. A fee schedule goes out of date: check the date before relying on it.

A broad specification carries its own sanction, and it stands on its own: revocation.

A proprietor who has not made genuine use of its mark, without proper reasons, for an uninterrupted period of five years, is liable to have its rights revoked for the goods and services concerned (article L. 714-5). The five years start at the earliest from the date of registration — not from the filing date. Certain uses count as use: use with your consent, use in a modified form which does not alter the distinctive character, and affixing the mark to goods intended exclusively for export.

Three points decide the real reach of that provision.

1. The burden of proof is on you. Article L. 716-3-1 is unambiguous: proof of use lies with the proprietor of the mark whose revocation is sought. It is not for the applicant to show that you are not using it. It is for you to show that you are, class by class, with documents.
2. Revocation can be partial. It may cover only some of the goods or services, and then extends to those alone. A twelve-class specification of which three are used does not fall entirely: it loses nine classes, and often the ones being relied on to keep a competitor at bay.
3. Waking up in time is not always enough. Resuming use after the five years in principle prevents revocation — unless it takes place within the three months preceding the application and after the proprietor has learned that the application might be made (article L. 716-3). The last-minute awakening is precisely what the provision neutralises.

There is a second, quieter sanction, which strikes at the moment you thought you were attacking. The proprietor of an earlier mark who files an opposition may be asked to prove genuine use of its own mark over the five years preceding the application it is challenging (article L. 712-5-1). A mark filed broadly and never used is therefore not merely vulnerable: it defends nothing.

The proprietor of the mark is the applicant. There is no other rule, and no exception drawn from what everybody knew.

A mark filed in the director's name belongs to the director, even if the company has been using it for eight years, even if the company paid the fee, even if the sign appears on all its packaging. The day the shareholders separate, the company is sold or an investor takes stock of the assets, the title is not where everyone thought it was.

The position can be put right for as long as everyone concerned agrees, and it costs little. An assignment of a mark must be recorded in writing on pain of nullity (article L. 714-1), and article L. 714-7 requires it to be entered in the national trade mark register to be effective against third parties — €27 per title. A paid invoice or a verbal agreement is not an assignment. This formality is specific to trade marks, and distinct from that of an assignment of copyright.

When the agreement no longer exists, there remains the claim to ownership. Where registration has been applied for in fraud of a third party's rights or in breach of a statutory or contractual obligation, a person claiming a right in the mark may claim ownership of it in court (article L. 712-6). The time limit is worth reading twice: five years from publication of the application for registration — unless the applicant acted in bad faith, in which case there is no limitation period at all. That is the limb which saves cases discovered late, and which makes it unwise to file “for the time being” in someone else's name.

Composite example, for illustration only. No real case. Two partners launch a consultancy and file their mark in class 35, in the name of one of them, “until the company is set up”. Four years later the company publishes software under the same name — class 42, not designated — and the partner who filed has left the business. Three problems in one: class 42 requires a fresh filing, which will take its date in 2030; class 35 belongs to a former partner whose agreement has become uncertain; and the mark in class 35 has never been used under its proprietor's name. Each of the three could have been settled in one line at the outset.

€190 for one class, €40 per additional class, €290 on renewal after ten years: measured against ten years of protection, the title itself costs almost nothing. Those amounts are from the schedule applicable as at 2 July 2026, and a schedule goes out of date — the date matters as much as the figure.

What costs money is the remedial work in the table above, and the time it takes. And what no fee can buy back is a lost priority date.

The choice between a French mark and a European Union mark turns on the territory actually exploited, and on a budget of a different order: that is a separate subject, dealt with on our page about protecting rights.

We approach a filing in the reverse order of the form: first what you sell and what you will sell, then the classes, the specification and the search for earlier rights, and last the application. We then watch the applications published — a right nobody watches is not defended within the two months.

In cases of this kind the difficulty never moves onto procedure: it moves onto the list of goods and onto who the proprietor is. Two points settled in one conversation beforehand, and in one set of proceedings afterwards.

A filing is quoted as a fixed fee — search, choice of classes and drafting of the specification included, with an estimate of the official fees: the fixed fee is announced before the filing. We give no undertaking as to the outcome of an opposition: our professional rules forbid it, and no one can seriously give one.

If you do not know which classes to designate, or in whose name to file, that is what taking stock before filing establishes.