Article L. 711-4 of the intellectual property Code lists some of the prior rights that may impact the availability of a trademark (this is not an exhaustive list) :
“A sign shall not be trademarked if it infringes prior rights, notably :
– a prior registered trademark, or a renowned trademark in the meaning of Article 6 bis of the Paris convention for the protection of industrial property;
– a company name, if there is a likelihood of confusion in the mind of the public;
– a commercial name or shop sign known on the whole territory, if there is a likelihood of confusion in the mind of the public;
– a protected geographical indication;
– copyrights;
– rights resulting from protected designs or models;
– rights relating to the personality of a third-party, notably his family name, his nickname or his image;
– Name, image of fame of a territorial collectivity.»
1st step: availability search among prior trademark
A sign is not available if there is a prior trademark which is identical or similar, for products or services which are identical or similar.
If there is similarity, the likelihood of confusion between the sign must be assessed. Seeking assistance of an IP expert is highly recommended.
Preliminary availability searches may be done on the INPI trademark database, , for French, european and international trademarks in force.
You can obtain more details on european trademark by consulting CTM Online, and on international trademark on Romarin.
It can be useful to limit the search to certain classes of products or services; depending on your activity (Nice classification is available on INPI’s website).
The results include the researched words, but no similarity analysis is performed. After having done the research on a sign, it is therefore useful to modify this sign to extend the scope of the research to close trademarks.
If a trademark appears troubling for the application, it is necessary to check precisely the list of products and services which are protected and whether this mark may be invalidated for lack of use (that is if it had not been used for 5 years). Summary searches may be done notably on the Internet. For a deeper analysis, it is best to ask for the service of specialized companies.
Depending on whether the prior trademark is used or not, several solutions are available: coexistence agreements, buying the mark, etc). We suggest you contact an IP expert.
2nd step: availability search through commercial signs of companies
To check out the availability of your trademark project, you should verify prior commercial signs, such as commercial names, company names and shop signs. You may search on:
– Infogreffe or société.com.
The search may be done using identical word or quasi-identical.
A prior commercial sign may be an obstacle to your trademark project, if there is a likelihood of confusion in the mind of the public. This is generally the case when the signs are identical or similar.
Search on the registers of international companies may also be done using the search engine provided by the Commercial Court of Paris.
3rd step: availability search through domain names
You may consult Nameshield. You can learn the name of domain names holders with the ‘Whois’ sheets. For “.eu” domain names, you should consult Eurid.
A domain name may be an obstacle if it is linked to a Website which offers products or services identical or similar to yours.
4th step: complementary searches
If the trademark you wish to apply for is a picture, you should search through registered design or models, using the tool we provide for there.
If you wish to apply for a trademark which is also a geographical indication, you should consult INAO. Note that it is forbidden to apply for a trademark which is a protected designation of origin.
These searches must be done for each trademark project. When an prior art item has not been found on a project, we highly recommend you contact an IP expert to perform a deeper analysis before any application.
If you intend to file a European trademark for agricultural products (class 31), it is recommended to check that the intented denomination is not recorded within the register of the European Plant Variety Office as a protected varietal name. If that is the case, the trademark bearing that sign will be refused to registration by the Trademark Office (OHIM), as it will be considered as an infringement upon article 7, subsection 1, point f) of the European Trademark Regulation which forbids trademarks contrary to public policy or to accepted principles of morality.
You can contact our Trademark and Design department headed by Delphine RUDLOFF.
