Intellectual property

Filing and watching trade marks and designs

A trade mark filing comes down to three choices. They are exactly the three that are paid for later, before a judge or before the INPI, the French intellectual property office.

The sign. A word mark protects the word whatever its typography. A figurative mark protects a logo as filed — and not the name it contains. A rebrand three years later leaves the first intact and empties the second of part of its scope.

The classes and the specification. A trade mark is valid only for the goods and services designated: that is the principle of speciality. Too narrow a specification lets a competitor set up alongside you owing you nothing. Too broad a specification exposes the mark to revocation for lack of genuine use after five years (art. L. 714-5 CPI) — the first argument that will be raised by whoever you take action against.

The territory. A French trade mark with the INPI, an EU trade mark with the EUIPO under Regulation (EU) 2017/1001 of 14 June 2017, international extension through the Madrid system. The EU trade mark has unitary character: it produces the same effects throughout the Union or in no member state at all — an earlier right raised in a single country can bring down the whole application.

The right obtained does not defend itself. The INPI does not raise earlier marks of its own motion: it is for the owner to watch published applications and to react within the deadline. Without watching, the troublesome mark is registered, and it will then have to be attacked for invalidity — longer, more expensive, on less favourable ground. Registration takes effect for ten years, renewable indefinitely.

Copyright and protection of creative work

A website, photographs, texts, plans, software and catalogues are protected from the moment they are created, with no filing, if they are original. Two points account for most of the files.

First, ownership. The supplier who designed your visual identity or your website remains the owner for as long as the rights have not been assigned to you by a written document complying with article L. 131-3 CPI: each right assigned is set out separately, with its field of exploitation, its duration and its territory. A paid invoice is not an assignment. That is the subject of the licences and assignments of rights that we draft.

Then, proof of the date: an enveloppe e-Soleau lodged with the INPI, a deposit with a third party, a constat drawn up by a commissaire de justice, the French enforcement officer. None of it is compulsory, and all of it becomes decisive on the day priority is disputed.

For software or a database, protection combines with the obligations that bear on the data being processed — a subject we take up from the side of compliance and technology contracts.

Protecting know-how and trade secrets

A formula, a process, a list of suppliers cannot be registered. They fall under trade secret protection, in place since Act no. 2018-670 of 30 July 2018 transposing Directive (EU) 2016/943 (arts. L. 151-1 et seq. of the French Commercial Code). Three cumulative conditions: the information is not generally known, it derives commercial value from that fact, and it is the subject of reasonable protective measures.

It is the third that is almost always missing: with no signed confidentiality agreement, no documented access restriction, no clause in the services agreements, the protection does not exist at the precise moment it is needed. It is built beforehand — that is our approach, anticipate rather than repair.

Infringement is the violation of a registered or recognised right: reproducing or imitating a registered trade mark, a design, a patent, or exploiting a work without authorisation. It is pursued in the civil courts, to stop the violation and make good the loss; it is also a criminal offence, which opens the way to a complaint and to customs action.

Compensation does not follow the ordinary rules: the court takes into account, separately, the negative economic consequences you have suffered, your moral prejudice, and the profits made by the infringer — or awards, at your request, a lump sum higher than the royalties that would have been due had authorisation been sought.

Saisie-contrefaçon and urgent measures

The saisie-contrefaçon, the infringement seizure, is the evidential tool particular to this field, and it has no equivalent: under an order made on an ex parte application, a commissaire de justice attends the premises of the suspected infringer to describe or seize the goods, the accounting records and the files.

Two rules govern the timetable. It is obtained without the other side being warned — hence the importance of not sending a formal notice too early. And it lapses if proceedings on the merits are not brought within the regulatory period that follows: twenty working days or thirty-one calendar days, whichever is the longer. So you do not have a seizure carried out before you have decided on the trial.

Référé proceedings, the French interim procedure, make it possible to obtain a provisional injunction, the withdrawal of goods or the blocking of an online offer; customs detention holds goods at the border, on the basis of an application for action lodged beforehand.

Opposition and invalidity actions before the INPI

Not everything goes through a court. Two administrative routes, quicker and less expensive, take place before the INPI:

• Opposition, within two months of publication of an application for registration, to prevent a troublesome mark from being registered;
• Invalidity and revocation actions, available before the INPI since the PACTE Act no. 2019-486 of 22 May 2019, with no time limit for the revocation of an unused mark.

That is where the quality of the original filing is measured: a badly built specification turns against its owner, whether that owner is claimant or defendant.

Infringement or free-riding: the boundary

This question decides everything, because it decides the legal basis.

• A registered or recognised right is at stake — a trade mark, a design, a patent, copyright: this is infringement, with its own tools (saisie-contrefaçon, customs detention, its own method of calculating loss).
• No such right is at stake — someone is taking your commercial get-up, your method, your reputation: the wrong falls under ordinary civil liability (art. 1240 of the French Civil Code). That is the ground of free-riding, which we deal with where the copying concerns no registered right.

The two actions can be combined in the same file, on one condition that the case law holds to firmly: the claim based on unfair competition must rest on distinct facts from those relied on for infringement. Adding the same facts twice does not double the compensation — it brings down the second claim.

Here we apply the method we apply on every file, with one particularity: in this field, the advisory work and the litigation are held by the same person.

1. Classification. A first conversation, at the office or by video call, to identify what can be protected or is already protected, under which right, and whether a legal basis genuinely exists.
2. Searches and audit of your rights. Availability searches before any filing; an inventory of existing rights, of renewals falling due and of missing assignments of rights.
3. Filing or action. Drafting the specification and filing with the relevant office; or, in defence, a reasoned choice between formal notice, opposition, saisie-contrefaçon, référé and proceedings on the merits, with the timetable and the budget for each option, in writing.
4. Long-term follow-through. Watching published applications, renewal deadlines, running the proceedings — by the same contact, from the first meeting to the decision.

A trade mark filing is priced as a fixed fee: a set amount, stated and accepted before the work begins, covering the availability searches, the choice of classes and the drafting of the specification. The official fees of the INPI or of the EUIPO are added to it and are estimated for you at the same time.

Watching and managing a portfolio of rights falls within the monthly retainer, together with renewal deadlines.

Infringement litigation is conducted under a written fee agreement, setting out the scope, the work planned and the billing arrangements. External costs — commissaire de justice, translation, expert reports — are estimated for you at the same moment. Nothing is billed outside that framework, and we give no undertaking as to the outcome of proceedings: our professional rules forbid it, and nobody can seriously hold to it.

Me Jérôme Pujol was admitted to the Bar in 2000 and has practised business law ever since, at the Bars of Paris and of the Pyrénées-Orientales. He holds a master's degree from ESSEC and began his career with Gide Loyrette Nouel in Bucharest, before founding the firm.

Two things matter particularly in this field:

• The person who files is the person who will argue the case. A specification is drafted differently depending on whether it is written to obtain a registration or to win an opposition five years later. Handling the filing and the litigation in the same firm means making that choice knowingly.
• The firm acts for young companies, whose trade mark is often their first asset — patron of the UPVD iN CUBE incubator, present at the Mobile World Congress in 2021. That is where a well-made filing is worth the most, because it still costs very little.

The judicial map of intellectual property is concentrated, and that is not a detail of organisation: it decides where your case will be argued. Trade mark actions fall to specially designated tribunaux judiciaires, the French general civil courts; those concerning an EU trade mark or a patent fall to the tribunal judiciaire of Paris alone.

From our office in the 7th arrondissement, we therefore handle most of the litigation on registered rights. From Perpignan, we act for businesses in the Pyrénées-Orientales and in Occitanie on what happens upstream — filings, trade mark portfolios, assignments of rights at the time of a takeover.

Our Catalan office, registered on Liste E with the Barcelona Bar, comes into its own as soon as a trade mark crosses the border. An EU trade mark runs up against Spanish earlier rights as much as French ones, and a distributor established in Catalonia who is using your sign is dealt with faster by a firm registered on both sides than by two firms passing the file between them.

We also work remotely throughout France, by video call and electronic signature.