Once you have chosen a legally compliant trademark (see the article on the legal conditions for the validity of a trademark), you must file a registration. Any individual or legal entity can file a trademark application, with or without the help of an agent (Industrial Property Attorney, lawyer, etc.). Registration can be done with the INPI in France, the European Union Intellectual Property Office (EUIPO) for the European Union, the World Intellectual Property Organization (WIPO) to extend the trademark in several countries via a single procedure, or directly in the countries chosen with the local institutes.
Trademark law is territorial, meaning that it is valid in the territory where the trademark was filed. For example, if the application is filed with the INPI, the protection is valid in France, if it is filed with the EUIPO, it will be valid in all countries of the European Union.
The applicant’s details are required, along with a representation of the trademark, a list of goods and services and the corresponding classes (the Nice Classification, which contains 45 classes). This step is important since the trademark is protected for the scope of goods and services specified in the application, this is the principle of speciality. For example, if the application only mentions class 42 for software, the protection will be limited to this field. Fees must also be paid at the time of filing.
Finally, for the registration, the institution examines the application and the validity of the trademark (both in terms of form and substance), then at the same time the trademark is published in the Official Bulletin of Intellectual Property so that third parties can be informed and oppose it if it infringes their rights. Once this opposition period is over, the trademark will be registered shortly thereafter, and a certificate will be issued to the holder. The starting date of protection is retroactive to the date of filing.
Trademark law is territorial, meaning that it is valid in the territory where the trademark was filed. For example, if the application is filed with the INPI, the protection is valid in France, if it is filed with the EUIPO, it will be valid in all countries of the European Union.
The applicant’s details are required, along with a representation of the trademark, a list of goods and services and the corresponding classes (the Nice Classification, which contains 45 classes). This step is important since the trademark is protected for the scope of goods and services specified in the application, this is the principle of speciality. For example, if the application only mentions class 42 for software, the protection will be limited to this field. Fees must also be paid at the time of filing.
Finally, for the registration, the institution examines the application and the validity of the trademark (both in terms of form and substance), then at the same time the trademark is published in the Official Bulletin of Intellectual Property so that third parties can be informed and oppose it if it infringes their rights. Once this opposition period is over, the trademark will be registered shortly thereafter, and a certificate will be issued to the holder. The starting date of protection is retroactive to the date of filing.
