You sell under a brand that works at home, and France is your next market. Your Paris distributor warns you that a local company already uses a similar name, your designer asks in which classes to file, and a French competitor files an opposition the week your application is published. Meanwhile your American, British or Emirati registration gives you no automatic rights on French soil, and every month of trading without a French filing builds goodwill that someone else can capture first. French trademark law answers each of these pressures with a registration system run by the INPI, the French intellectual property office, combined with hard deadlines and a simple rule: use the mark seriously every five years or lose it. This article explains, in plain English and with the exact statutes and court decisions that control, how a foreign company protects its brand in France from abroad: why a French filing beats reliance on a foreign registration, how the search, the classes, the publication and the opposition work in practice, how the five-year genuine-use requirement and partial forfeiture operate, and how French courts punish counterfeiting and confusion. Every acronym is explained, every decisive statement links to the official text, and Paris specifics run through the article, because that is where most disputes land.

I. How do you secure a French trademark while you run the business from abroad?

A. Why a French filing beats relying on your foreign registration

Trademark rights are territorial. A registration in the United States, the United Kingdom, the United Arab Emirates or anywhere else gives you no exclusive right in France by itself, and selling into France for years without filing means the clientele you build sits on a name you do not own. French law states the founding rule in one sentence: La propriété de la marque s’acquiert par l’enregistrement. Ownership comes from registration, not from first use, not from a company name, not from a domain name. The company name on your Kbis extract, the company identity certificate issued by the clerk of the commercial court, protects you in company law, and a domain name protects an address on the internet, but neither stops a competitor from registering your brand as a trademark and then forbidding you from using it. Foreign founders discover this hierarchy too late, usually when a distributor registers the brand locally and becomes the legal owner of the name the foreign group created. Filing first, in your own group’s name, before disclosing the brand to partners, is the cheapest protection in French business law.

Registration gives you a property right limited to what you designate: L’enregistrement de la marque confère à son titulaire un droit de propriété sur cette marque pour les produits ou services qu’il a désignés. Two consequences follow for a foreign applicant. First, the list of goods and services, drafted by classes of the Nice Classification, the international system that groups products and services into numbered classes, decides the real scope of your monopoly. A filing in class 25 for clothing does not protect software in class 9 or restaurant services in class 43, and a competitor may lawfully use a similar sign for unrelated goods where no confusion exists. Draft the list to cover what you sell now and what you will plausibly sell within five years, because adding classes later means a new filing with a new date. Second, the right starts on the filing date: L’enregistrement produit ses effets à compter de la date de dépôt de la demande pour une période de dix ans indéfiniment renouvelable. The earlier you file, the earlier your priority, and the registration then lasts ten years, renewable indefinitely. Where protection across the whole European Union is the goal rather than France alone, the regional European Union trade mark is the parallel route; where France is the beachhead, the national filing with the INPI is the direct one, and the two can coexist in a portfolio.

Before filing, order a prior-rights search. The INPI database shows identical and similar French marks, and a professional search extends to European Union marks, company names, trade names, domain names and even appellations of origin that can be invoked against you. A search costs a fraction of an opposition defense or a rebranding, and it shapes the filing: sometimes one letter changes, sometimes the list of classes narrows, sometimes the project name changes entirely before a euro is spent on packaging. If the search reveals a close earlier mark in identical classes, filing anyway means accepting a likely opposition and a possible nullity action later, which is a business decision to take with open eyes, not by accident. Keep the search report with the file, because it proves good faith if a conflict ever reaches a judge. The companion guide on setting up the French vehicle itself, from bank account to Kbis to VAT, sits here: Setting Up a Company in France as a Foreign Founder: Bank Account, Kbis, VAT and Your First Hire.

The filing itself is electronic, in French, through the INPI portal, and it must survive two filters. The absolute filter refuses signs that cannot be marks at all, starting with marks with no distinctive character: the statute lists, among signs that cannot be validly registered, Une marque dépourvue de caractère distinctif and Une marque composée exclusivement d’éléments ou d’indications pouvant servir à désigner, dans le commerce, une caractéristique du produit ou du service, such as its kind, quality, quantity, purpose, value, geographical origin or time of production. A foreign brand that simply describes the product in English, like a laudatory word for software speed or a geographic term for wine, faces refusal in France even if it passed elsewhere, because French examiners and judges assess descriptiveness through the French-speaking public. Fanciful or arbitrary signs pass; descriptive ones need proof that the public has learned to see a brand in them, which a newcomer rarely has. The relative filter is the earlier rights of others, enforced through opposition and nullity actions, examined next.

B. How publication, examination and opposition work after you file

Once filed, the application is published within about six weeks in the BOPI, the Official Bulletin of Industrial Property where French trademark applications and registrations appear, and the INPI examines whether the file is complete and lawful. Publication opens the danger window that surprises foreign applicants: for two months from publication, any holder of an earlier right can file an opposition, a fast administrative procedure before the INPI that can block or narrow your registration. Opposition practice before the INPI is codified and priced: an opposition based on one earlier right costs 400 euros, plus 150 euros per additional earlier right invoked, it must be filed online, and since the trademark reform the opponent gets the two-month window plus one extra month to submit the statement of grounds and supporting documents. Only holders of earlier rights and the persons exhaustively listed by the statute may oppose, which means a competitor without an earlier mark cannot use opposition to harass you, but a competitor with one nearly always will.

Receiving an opposition from abroad is manageable if you react within the procedure instead of around it. The INPI sets a timetable with written rounds, and most oppositions settle: the applicant narrows the list of goods and services to remove the overlap, the parties sign a coexistence agreement with undertakings on presentation and territory, or the opponent withdraws after negotiation. What destroys files is silence. An applicant that ignores the INPI timetable while asking its home counsel to write protest letters in English loses by default, because the Institute decides on the French file before it. Appoint a French representative for the opposition on day one, answer each round in French with evidence of the differences between the signs and the goods, and negotiate in parallel, since a coexistence deal signed mid-procedure ends it. If the opposition succeeds only partly, take the partial win and refile a narrower application rather than appealing reflexively, because each additional round costs more than a clean new filing.

Beyond opposition, earlier holders can attack a registered mark with a nullity action, and the forum depends on the ground. Since the 2019 reform, absolute grounds such as lack of distinctiveness go to the INPI, while relative grounds based on earlier rights go to the INPI or to the designated courts depending on who sues: the statute sends nullity claims on relative grounds to the Institute and the courts for the holders of earlier rights exhaustively listed. In practice this means a French competitor holding an earlier mark chooses its battlefield, and a foreign owner defends on two possible fronts. The lesson for filing strategy is to keep the prosecution file clean: a distinctive sign, a list of classes that matches real activity, and evidence of use from the start, because every weakness visible at filing becomes ammunition in opposition and nullity later. Where the group later creates a French subsidiary to hold or exploit the brand, the corporate steps of that subsidiary, from registration to funding, are described here: How a Foreign Group Creates a French Subsidiary From Abroad: Filiale, SAS, Registration and Funding.

Assignment and licensing deserve one paragraph before enforcement, because foreign groups constantly move brands between parent, subsidiary and distributor. French law makes the mark a transferable asset: Les droits attachés à une marque sont transmissibles en totalité ou en partie, indépendamment de la personne qui les exploite ou les fait exploiter. You may sell the mark, contribute it to the French subsidiary, or license it exclusively or not, for all or part of the territory and the goods. But record the transfer: an assignment that stays in a drawer in London is unenforceable against third parties in France until published, and a distributor that registered the brand in its own name during the relationship must be made to assign it back before the relationship ends, not after. Put trademark ownership, license scope and return clauses into every distribution and franchise agreement governed by French law from the first draft.

II. How do you keep the mark alive and punish counterfeits in France?

A. Why five years of genuine use decides whether your mark survives

Registration is the beginning, not the end. French law takes back marks that sit unused: Encourt la déchéance de ses droits le titulaire de la marque qui, sans justes motifs, n’en a pas fait un usage sérieux, pour les produits ou services pour lesquels la marque est enregistrée, pendant une période ininterrompue de cinq ans. Forfeiture, called déchéance, can be requested in court by any interested person, and since the reform it can also be brought before the INPI. For a foreign group, the trap is concrete: the French filing protects the launch, the launch slips by two years, distribution stays informal through a foreign website with no French invoices, and in year six a competitor petitions for forfeiture with evidence that nothing was ever sold under the mark in France. Use must be serious, meaning real commercial exploitation in France for the registered goods and services, not token sales to friends or internal transfers. Invoices to French customers, French advertising, a French online shop with deliveries, distributor sales reports and after-sales records are the proof; keep them from the first year, per class, because the judge counts use class by class.

The Court of Cassation, the highest French court for civil and commercial matters, enforces this mechanism strictly and proportionally. In a 2025 dispute between two transport groups over similar names, the Court restated the statute word for word, holding that encourt la déchéance de ses droits le propriétaire de la marque qui, sans justes motifs, n’en a pas fait un usage sérieux, pour les produits et services visés dans l’enregistrement, pendant une période ininterrompue de cinq ans, and it applied the European reading under which forfeiture can be partial: Si la demande ne porte que sur une partie des produits ou des services visés dans l’enregistrement, la déchéance ne s’étend qu’aux produits ou aux services concernés (Cass. com., 14 May 2025, no. 23-21.296). The message for a foreign portfolio is two-sided. Unused classes die while used classes live, so a broad defensive list that you never exploit becomes a menu from which competitors delete the dishes they want. Conversely, when attacking a competitor’s blocking mark, aim the forfeiture claim precisely at the classes you need rather than demanding everything, because a targeted claim succeeds where a sweeping one fails.

A second decision shows how forfeiture and infringement interact around dates. A French individual owned a semi-figurative mark for spirits and sued companies selling a liqueur under a similar name, while the defendants countered that his mark had lapsed for non-use with effect from a specific date. The Court of Cassation combined both statutes, recalling that Le premier de ces textes interdit, sauf autorisation du propriétaire, s’il peut en résulter un risque de confusion dans l’esprit du public, l’imitation d’une marque et l’usage d’une marque imitée, pour des produits ou services identiques ou similaires à ceux désignés dans l’enregistrement, and it quashed the appeal ruling that had thrown out accounting documents proving sales under the sign during the disputed period (Cass. com., 4 Nov. 2020, no. 16-28.281). For a foreign owner, the operational lesson is about records, not rhetoric: dated invoices mentioning the sign, per product line, decide whether your infringement case is heard at all, because a defendant that proves forfeiture first wins without ever discussing confusion. Calendar the fifth anniversary of every French filing, assemble the use file before it, and if genuine use has genuinely not started, consider refiling rather than defending a dead mark, while checking that no third party filed in between.

Renewal is the quieter sibling of use. The statute gives ten years per term, renewable indefinitely, and INPI practice requires renewal within the year before expiry, with a six-month grace period after expiry subject to a 50 percent late fee, plus a reminder email one year before for owners without a representative. A foreign group with several marks should centralize renewals with one representative and one docket, because losing a ten-year-old mark with established use to a missed deadline is the most expensive clerical error in this field. Renew only the classes still used or credibly planned, and let the rest lapse deliberately rather than feeding forfeiture claims later.

B. How French courts punish counterfeiting, confusion and parasitic copying

When someone uses your sign without permission, French law calls it counterfeiting, called contrefaçon, and attaches civil liability directly: L’atteinte portée au droit du titulaire de la marque constitue une contrefaçon engageant la responsabilité civile de son auteur. The core prohibition covers lookalikes where the public may confuse: the statute forbids, without the owner’s consent, D’un signe identique ou similaire à la marque et utilisé pour des produits ou des services identiques ou similaires à ceux pour lesquels la marque est enregistrée, s’il existe, dans l’esprit du public, un risque de confusion incluant le risque d’association du signe avec la marque. Identical sign on identical goods infringes without further debate; similar sign on similar goods infringes when confusion, including mere association in the public mind, is likely. Famous marks go further and reach dissimilar goods where the use without due cause takes unfair advantage of distinctiveness or harms it. For a foreign brand entering France, this means the test is always the French public: English wordplay that confuses a Paris consumer infringes even if the two names look different to a London eye, and survey and market evidence in France outweigh assertions from headquarters.

One decision every foreign owner should know concerns the mere filing of an infringing sign. The Court of Cassation recalled its older line that le dépôt à titre de marque d’un signe contrefaisant constitue à lui seul un acte de contrefaçon, indépendamment de son exploitation, then expressly reconsidered it in light of the European Court of Justice, which requires use in the course of trade before the owner can prohibit a third party’s similar sign (Cass. com., 13 Oct. 2021, no. 19-20.504, Wolfberger). The same ruling polices family names used as brands: a third party may be forbidden from using its own surname only where it commits counterfeiting or where serious reasons suggest it is about to, and the multiplication of filings around a surname can separately support an unfair-competition claim where the facts go beyond the punished counterfeiting. For a foreign founder whose surname is the brand, the lesson runs both ways: your name does not immunize you against an earlier French mark, and an earlier French mark does not automatically silence your honest surname use, but the boundary is drawn by French judges on French confusion evidence.

Enforcement in France follows a practical ladder. Start with a formal notice setting out the registration numbers, the infringing acts with dated proof, and a short deadline to stop, withdraw stock and disclose volumes, because French judges reward owners that tried to stop the bleeding before suing. Continue, where counterfeits circulate, with a court-authorized seizure of the fakes, called saisie-contrefaçon, executed by a process server, now called a commissaire de justice, which freezes evidence before it disappears. Then sue for prohibition under penalty, recall and destruction of infringing goods, publication of the judgment, and damages measured by the infringer’s profits, your lost profits and moral harm to the brand. Customs detention of suspected counterfeits at the French border complements the ladder for foreign groups whose fakes arrive by container. Run each step from Paris counsel even when you live abroad: the seizure order, the writ and the evidence timetable all run in French, on French deadlines, before the designated courts, in practice the Paris judicial court, called the tribunal judiciaire de Paris, whose third chamber hears the bulk of trademark cases. Keep the chain of title complete from the foreign parent to the French claimant, with assignments recorded, because a claimant that cannot prove it owns the mark on the day it sues loses on standing before confusion is even discussed.

Paris and Île-de-France concentrate every part of this practice. Searches and filings run online with the INPI, oppositions are handled administratively, and litigation concentrates before the Paris courts with specialized judges, bailiffs-process servers and technical experts for seizure operations in warehouses around Roissy, Rungis and the Seine-Saint-Denis logistics hubs. Serve every act through a local process server, translate every foreign exhibit with a certified translation, and keep one Paris file per mark containing the registration certificate, the use evidence per class, the renewal dates and the chain of title. A foreign company whose brand file is complete negotiates coexistence deals from strength and wins interim relief quickly; a company whose file sits across three countries in two languages settles at a discount.

Conclusion

A French trademark gives a foreign company what no foreign registration, company name or domain name gives: a property right in the brand for France, effective from the filing date, renewable forever, enforceable against lookalikes that confuse the French public. Each advantage runs on discipline: search before filing, file in your own name before disclosing the brand, draft the classes for real business, answer oppositions on the INPI timetable, use the mark seriously in France from year one, docket the fifth anniversary and the tenth-year renewal, and record every assignment. Managed that way from London, New York, Dubai or Singapore, the French mark becomes what the statute intended: the legal fence around the goodwill your business builds in France, and a weapon that works in the Paris courts when someone climbs over it.