Is it preferable to register a French trademark or a European Union trademark?

I am often asked by my customers about the question of the choice between registering a French trademark, or a European Union trademark. The differences between these two trademarks are not always clear to the uninitiated.

I am therefore offering you a quick summary of their characteristics, and some possible choices.

Registration of a French trademark

The French trademark is registered with the INPI. The INPI is an organization whose mission is to manage French intellectual property registers.

A trademark registered with the INPI therefore only covers French territory, and, optionally, French Polynesia.

Only French (or international trademarks in force in France) and EU trademarks are likely to constitute prior to your registration.

The filing fees at the INPI, via the website are 210 euros for three classes, and 42 euros per additional class.

Once the trademark is published by the INPI, the opposition period is 2 months.

The trademark is registered for 10 years, and will therefore have to be renewed at the end of its term.

Registration of a European Union trademark (EU trademark)

The European Union trademark is registered with the European Union Intellectual Property Office (EUIPO). The EUIPO is a European Union agency that is responsible for managing EU intellectual property titles.

A trademark registered with EUIPO covers the territory of all EU member states. It is therefore not necessary to register a national trademark in all EU countries in order to benefit from broad protection.

An EU trademark is likely to constitute an enforceable precedence in all EU countries.

Conversely, any national trademark, registered in one of the countries of the EU, any international trademark relating to one of the countries of the EU, as well as any EU trademark, is likely to constitute an enforceable precedence to the registration of the EU trademark.

The fees for filing with EUIPO, via the website are 850 euros for one class, 50 euros for the second class, and 150 euros for any additional class.

Once the trademark is published by EUIPO, the opposition period is 3 months.

The trademark is registered for 10 years, and will therefore have to be renewed at the end of its term.

Register a French trademark or an EU trademark?

This is a decision that is essentially an internal strategy decision.

However, there are a few ways to guide your choice. However, these do not take into account your personal situation, which may require a more specific analysis.

If your business is only aimed at France, and if you have no intention of expanding it within the EU, the French brand is generally more than enough.

If you have an activity in France, and/or are considering expanding it within the EU, the decision is more complex:

• You are considering doing business in less than three or four EU countries: it is entirely possible to register a French trademark and a national trademark in any other country. EU trademark registration is generally less financially relevant.
• You are considering doing business in more than three or four EU countries: registering an EU trademark is generally easier administratively, and less expensive.

However, having national trademarks instead of an EU trademark sometimes makes it possible to bypass annoying precedents in one of the EU countries. Indeed, it is thus possible to register the trademark only in countries without risk.

It is also entirely possible to register both types of trademarks. Remember that in case of registering a trademark, you have a period of 6 months to extend it abroad, and benefit from the initial filing date for both brands. It is a useful faculty, which must be taken advantage of to guarantee your precedence.

Do not hesitate to contact us for a detailed analysis of your situation. The analysis must be done on a case-by-case basis in order to ensure optimal protection of your trademarks.