Choosing a Mark
In France and the EU, the office will not refuse your application over someone else's prior mark — and it will not refuse anyone else's application over yours. Relative grounds live or die on the initiative of rights holders.
Third-party rights are relative grounds for refusal under Article L. 711-3 of the French Intellectual Property Code. Unlike absolute grounds — the intrinsic defects of a sign, examined ex officio by the INPI — relative grounds are raised only through a third party’s opposition or an invalidity action.
US counsel should pause on what this means in both directions:
Two INPI decisions crystallize the divide. On the absolute-grounds side, INPI, Nov. 10, 2025, NL 25-0050 — IMMODATA: the sign ImmoData was invalidated as non-distinctive because the relevant consumer would understand it not as a mark but as mere information — that the service concerns real-estate data (“immobilier” being French for real estate). On the relative-grounds side, the IMPERIUM application was defeated by the earlier mark IMPERIAL FASHION — but only because its owner opposed (INPI, June 7, 2019, OPP 18-5038). For the intrinsic-validity side of the analysis, see absolute grounds.
Article L. 711-3, I lists the earlier rights that can defeat a later mark. Important caveat: not all of them can be invoked in INPI opposition proceedings — some can only be raised before the judicial court or in an invalidity action.
The most common basis: French registered marks, EU trademarks, international registrations effective in France (Madrid system), and well-known marks within the meaning of Article 6bis of the Paris Convention.
Two scenarios justify opposition: (a) double identity — identical mark, identical goods/services; and (b) similarity — identical or similar mark for identical or similar goods/services, but only where a likelihood of confusion exists.
The INPI’s confusion analysis reads much like a DuPont-factor analysis compressed to essentials — visual, phonetic and conceptual comparison, weighed globally. In IMPERIUM / IMPERIAL FASHION, the INPI found strong visual, phonetic and conceptual resemblance: identical length, six of eight letters in common in the same order forming the same long opening sequence IMPERI-, identical three-beat rhythm, identical opening and central sounds, and the same evocation of empire or emperor.
In INPI, Nov. 6, 2020, OPP 19-3468 — FOLLOW U / FOLLOWME, confusion followed from a shared construction: the term FOLLOW plus a personal-pronoun element (U, phonetically YOU, versus ME), giving the signs the same physiognomy, identical rhythm, close sounds and the same evocation.
Marks with a reputation enjoy enlarged protection: a later mark can be refused even for dissimilar goods or services where its use would take unfair advantage of, or be detrimental to, the earlier mark’s distinctive character or repute — the French/EU analogue to dilution protection, but integrated directly into opposition practice.
INPI, May 20, 2022, OPP 21-2978 — DROPS / DROPBOX is a clean illustration. The INPI found, on extensive independent evidence, that DROPBOX had been intensively used and was known on the French market for electronic file-storage software. Comparing the signs, it noted the shared attack sequence DROP-, close length (five letters versus seven), four letters identical in the same order and rank, identical opening sounds and a shared final sibilant (S/X). The opposition succeeded in part: the DROPS application was rejected for electric batteries, software design, cloud computing and server hosting — but survived for waste-treatment services, a field too remote for the public to draw a link with DROPBOX. Reputation protection is broad, not boundless.
A company’s corporate name (dénomination sociale) can ground an opposition against an identical or similar mark where there is a likelihood of confusion. Case law requires that the company name predate the contested filing, cover activities actually carried on (not merely listed in the bylaws), and enjoy sufficient recognition on the territory. Note the contrast with US practice, where trade names as such are not registered federally; in France they are opposable rights.
These can support an opposition provided their scope is more than purely local. For domain names, two cumulative conditions: actual operation as a website before the contested filing, and recognition across the national territory. A parked domain is not a prior right.
Appellations of origin (AOC/AOP), protected geographical indications (IGP) and traditional terms enjoy reinforced protection: a mark incorporating or evoking them can be refused. This is a distinct regime from ordinary place-name trademarks — a distinction worth keeping sharp when clearing geographic branding.
A work protected by copyright (literary, artistic, musical, software, photography), a registered design, or a person’s surname, pseudonym, image or voice can each justify invalidation of a mark that appropriates them without authorization.
Regions, departments, municipalities and public bodies are protected against marks exploiting their name or image without authorization — a French particularity with no close US equivalent, and a mandatory checkpoint when a brand borrows a French city’s name.
Confusion is assessed globally, with interdependence of factors: a high degree of sign similarity can offset a lower degree of goods similarity, and vice versa — the same global-appreciation logic EU practitioners apply before the EUIPO.
Where the earlier mark is reproduced in its entirety inside the contested sign, confusion is generally found. Two INPI decisions show how little a prefix helps:
If your clearance search shows your candidate mark wholly contains — or is wholly contained in — an earlier mark for related goods, treat that as a red flag, not a nuance. This is exactly the analysis to run before choosing the sign — see choosing a trademark.
Once registered, the mark confers an exclusive right. Article L. 713-2 of the Intellectual Property Code allows the owner to prohibit third-party use of: (1) an identical sign for identical goods or services; (2) an identical or similar sign for identical or similar goods or services where there is a likelihood of confusion; and (3) an identical or similar sign for dissimilar goods or services where the mark has a reputation and the use takes unfair advantage of it or harms it. These prohibitions are the foundation of infringement actions before the French courts.
For the practitioner, the probability of a successful opposition varies with the configuration:
Systematic watching of new filings — the BOPI for French marks, the EU trademark bulletin for EUTMs — is indispensable, because the windows are short: two months from publication to oppose in France, three months at the EUIPO. Miss the window and only the longer, costlier routes remain: invalidity proceedings or court litigation. If you are on the receiving end instead, the same short deadlines apply to your response.
Own a US brand entering Europe — or a European registration nobody is watching? Talk to us about clearance and watch coverage.
How to choose a protectable sign and draft the goods and services for a French or EU trademark filing — a Paris practitioner's guide for US counsel.
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.
How French law handles genericide: revocation under Article L. 714-6 CPI, the RAPIDO decision, dictionary corrections, and the owner's compliance playbook.