Choosing a Mark
Before you file in France or before the EUIPO, two decisions shape everything that follows: the sign itself, and the goods and services it will cover. Both work differently than at the USPTO.
Under Article L. 711-1 of the French Intellectual Property Code, a trademark is a sign that serves to distinguish the goods or services of one person or company from those of others, and that can be represented in the national trademark register in a way that lets anyone determine clearly and precisely what is protected.
Since France’s 2019 trademark reform, the range of acceptable formats is broad. The INPI (the French trademark office) accepts, among others:
In practice, most filings come down to a choice between a word mark and a figurative mark — the same fork US counsel knows as a standard-character drawing versus a special-form (stylized/design) drawing.
The rule of thumb we apply is simple: the simpler the sign, the broader the protection — but the higher the risk of a third-party opposition or of an INPI refusal for lack of distinctive character.
A word mark in standard characters protects the word itself in any presentation, which is the strongest position for enforcement. But a word that leans descriptive will draw an office refusal or an irregularity notice, much like a Section 2(e)(1) refusal from a USPTO examining attorney. A figurative mark with a distinctive logo or calligraphy can carry a weak word element to registration, at the price of narrower protection. For borderline signs, this is often the deciding factor — see our discussion of absolute grounds of refusal.
Article L. 711-2 of the Intellectual Property Code sets the conditions a sign must meet to be accepted by the INPI without an irregularity notice. A French trademark must:
The policy behind this list will feel familiar to US practitioners: descriptive and laudatory terms must remain available to all traders, and consumers must be protected from shocking or misleading signs. The INPI refuses, for example, marks promoting illegal drugs, and marks that are degrading or insulting.
Note one structural point on which France and the EU differ from US practice: geographic terms are handled under the general descriptiveness rule (geographic origin is simply one listed characteristic), and place names raise specific issues that deserve their own analysis — see place names as trademarks.
There is no single “right” mark; there is a right mark for a given strategy. The factors we weigh with clients:
A coined term with no prior similar marks supports an aggressive enforcement posture. A suggestive term in a crowded field usually means accepting coexistence — and drafting the specification accordingly.
Goods and services are divided into the 45 classes of the Nice Classification: classes 1–34 for goods, classes 35–45 for services. A single application can combine goods and services across multiple classes.
Article R. 712-3-1 of the Intellectual Property Code requires that goods and services be designated with sufficient clarity and precision for anyone to determine, from the wording alone, the scope of protection. General terms — including Nice class headings — are read as covering only what falls clearly within their literal meaning. And, critically: whether goods or services sit in the same or different classes has no bearing on whether they are identical or similar. Classes are an administrative search tool, not a similarity test — the same principle US counsel applies under USPTO practice, where classification is likewise not dispositive of relatedness.
Two differences from USPTO practice matter for drafting:
On cost: INPI official fees run €190 for the first class and €40 for each additional class — so a one-class filing costs €190, two classes €230, three classes €270, and ten classes €550. This pricing makes a well-built multi-class French filing remarkably inexpensive compared with a US multi-class application. Full figures across offices are on our fees and costs page.
Choosing the sign and the specification is inseparable from sequencing the filings.
The six-month priority right. A first filing opens a six-month window to file the same sign for the same goods and services in other countries with retroactive effect to the first filing date. A French national application is an excellent priority anchor for a US company testing the European market: it is inexpensive, it produces an early examination signal, and it preserves the date while you decide whether to extend — to an EU trademark, to national filings, or through the Madrid Protocol.
Seniority. When an EU trademark is filed and an earlier French mark already covers the same sign and (at least in part) the same goods and services in the same owner’s name, the French mark’s seniority can be claimed in the EUTM. If the French registration later lapses for non-renewal, the owner keeps the benefit of its rights as if it had been renewed. Seniority and priority can be combined — another reason a French national mark holds long-term strategic value rather than being a mere stepping stone.
Madrid dependency. An international registration must rest on a base mark. For its first five years, whatever happens to the base mark happens to the international registration: if the base mark is refused, or falls to an invalidity or revocation action, the international registration falls with it (the “central attack” problem). The solidity of the base filing is therefore a real underwriting question, not a formality.
Portfolio maintenance. A portfolio is completed over time: additional signs, additional goods and services, additional territories — French marks, French marks designating French Polynesia, EU trademarks, international registrations, and direct national filings in countries outside the Madrid system. Logos evolve, product lines evolve; keeping the registered rights aligned with actual use is constant, recurring work, which is also what keeps marks safe from non-use revocation and supports timely renewals.
We advise on the choice of sign before filing precisely because the cheapest problems to fix are the ones that never reach the register: a refusal, an irregularity notice, or an opposition avoided is worth far more than one defended. That assessment combines the distinctiveness analysis above with a proper availability search against third-party rights.
Planning a European filing program? Talk to us before you choose the sign — that is when advice is worth the most.
Can a US company register a city or place name as a trademark in France or the EU? The descriptiveness test, acquired distinctiveness, and filing strategy.
Distinctiveness, descriptiveness, deceptiveness and acquired distinctiveness before the INPI — absolute grounds in France, explained for US counsel.
Prior marks, reputed marks, company names, likelihood of confusion: how third-party rights defeat French trademarks, and why watching is essential.
How French law handles genericide: revocation under Article L. 714-6 CPI, the RAPIDO decision, dictionary corrections, and the owner's compliance playbook.