What happens to your trademark after it has been filed?
Use your trademark
You can use your trademark yourself or have it used by others: you can sell it, contribute it to the capital of a company, license it out, etc.
If you do not use your trademark, you risk losing your monopoly.
Monitor your trademark
A registered trademark protects you in France against any use by another person without your consent. Once your trademark has been filed, make sure no one uses or imitates it for identical or similar products.
Defend it:
- by settling the dispute amicably,
- by opposing the registration of trademarks that imitate yours,
- by suing infringers.
This procedure allows you to oppose the registration of a new trademark if you think it infringes on your rights. Simple and quick, this procedure must be initiated before the INPI within two months of the publication of the trademark application you are challenging, and constitutes an effective means for settling many disputes.
Record any event affecting the life of your trademark
Enter in the Trademark Register any event affecting the life of your trademark, such as an assignment contract, a license agreement or a change of address.
Renew your trademark
You can renew your trademark indefinitely, every 10 years, by filing a renewal application with the INPI.
You cannot add new products or services, and you cannot change the representation of the trademark. Such changes are only possible if you file a new trademark application.
Protect your trademark abroad
The right questions to ask yourself during this step
What are my markets abroad?
In which countries can I consider exploiting my trademark?
Is there still time to seek protection abroad?
If you plan to exploit your trademark abroad, several options are available to you, in particular:
- filing a European Union trademark
By filing a single application with the European Union Intellectual Property Office (EUIPO), you can obtain protection throughout the territory of the European Union.
> www.euipo.europa.eu
- filing a trademark to gain protection in sub-Saharan French-speaking Africa
By filing a single application with the African Intellectual Property Organization (OAPI), you can obtain protection in several French-speaking African countries.
> www.oapi.int
- filing an international trademark
Based on a French registered trademark or an application for registration in France, you can seek protection in one or more countries through the World Intellectual Property Organization. An international trademark application must be filed with WIPO through the IP office of your country of origin.
> www.ompi.org
- filing a trademark in each relevant country
In this case, depending on the countries concerned, you may need to act through an authorised representative, such as an industrial property attorney.
Your filing with the INPI grants you a priority right. If you file a trademark application in a member country of the Paris Union or the World Trade Organization (WTO)*, you have 6 months from the date of filing to gain protection abroad while benefiting from the date of filing with the INPI.
Thus, when you file a trademark application abroad, you retain the original filing date. Applications filed by third parties in the meantime cannot be opposed to you.
* The list of member States of the Paris Union and the WTO can be obtained from the INPI and on the web sites of the World Intellectual Property Organization (www.wipo.int) and the World Trade Organization (www.wto.org).
