FAQ - Questions juridiques
- I want to register my trademark. Do I have to ask for prior searches?
- I create my e-commerce website. Do I have to draft general terms and conditions of sale?
- I run an e-shopping website. Do I have to undertake CNIL formalities?
- I am drafting the general terms and conditions of sale of my website. Why can't I use my competitor's?
- I create my own company. What prior IP matters do I have to think about?
- I asked my communication agency to create my logo. Am I the rightful owner of it?
- A competitor is using a trademark which is very similar to mine. What can I do?
- I want to use pictures available on the Internet on my own website. Is that possible?
- I am victim of slander/insult. What can I do?
- I would like to establish a R&D partnership with another company. How can I secure my IP rights?
- I would like to register a patent. What main issues do I have to be vigilant about?
- I am the author of an artistic work. How can I secure my rights?
I want to register my trademark. Do I have to ask for prior searches?
The aim of prior searches is to check that a sign/term you want to register as a trademark is available, meaning that it has not already been registered by a third party for identical, similar or complementary goods and services. For example, an identical or similar company name / registered trademark for an identical or linked activity is an impediment to an application for registration (e.g.: the trademark "ROTURI" will definitely be an obstacle to the application for registration concerning the term "RAUTURI" for the same services).
Traditionally, prior searches in France are carried out among trademarks which are in full effect in France (French, Community and International - designating France - trademarks), company names, trade names and domain names. It is highly recommended to undertake such searches prior filing an application, unless the registration and use of the trademark may be disputed by a competitor at the application stage or a few years after the registration of the trademark, when your commercial identity is already well settled. Indeed, the French Industrial Property Office does not check the availability of a trademark before it is registered.
I create my e-commerce website. Do I have to draft general terms and conditions of sale?
General terms and conditions of sale are compulsory in a professional-consumer relationship (Cf. in particular articles L. 111-1 and L. 113-3 of the Consumer French Code).
Between professionals, general terms and conditions of sale are not mandatory but highly recommended. It is indeed a very important document which organizes the contractual rules which will apply to the commercial relationship (delays of delivery, forms of payment, guarantee, liability clause, etc.) and is part of the pre-contractual information.
I run an e-shopping website. Do I have to undertake CNIL formalities?
Yes. Why? The French Data Protection Authority (CNIL) imposes that any device automatically processing personal data has to be declared by the data controller.
Is considered such device the interface through which an internet user will give, while ordering a good or a service, his surname/last name, email address, telephone number, address, bank details, etc.
I am drafting the general terms and conditions of sale of my website. Why can't I use my competitor's?
Courts have considered in some case law that identical reproduction of a competitor general terms and conditions of sale is considered unfair competition. It is therefore highly recommended to draft personalized general terms and conditions, in order to avoid that an indelicate appropriation of someone else general terms and conditions be held as a blameworthy investment saving.
Beyond that risk, it is always better to draft general terms and conditions which perfectly match your real business or goods, in order to avoid forgetting compulsory legal wordings.
Consumer Law applies to all B2C commercial websites. Therefore, it is necessary to check that your general terms and conditions comply with new laws, otherwise you might be punished by the Directorate- General for Competition, Consumer Affairs and Prevention of Fraud (DGCCRF).
I create my own company. What prior IP matters do I have to think about?
You create your company. Your company and its goods and services will have names. Think about registering them as trademarks, keeping in mind that prior searches are crucial in order to check their availability first. Your goods are esthetically and technically new. Think about protecting their technical aspects with a patent and their appearance with an industrial design. You will also be on the Internet. Do not forget to register the corresponding domain name. Your activity is related to software, it appears necessary to declare your source code to the competent authority.
All these innovations have been realized by third-parties service-providers. If you have not transferred the rights, the latter remain owners of the corresponding IP rights. Therefore, you have to anticipate proper transfer agreements, complying with legal formalities stated for each IP right.
I asked my communication agency to create my logo. Am I the rightful owner of it?
A logo is a graphic creation protected under copyright law. Therefore, pursuant to article L. 111-1 of the French IP Code, the logo is the property of its designer (communication agency) and remain its property, until a transfer agreement (for which the conditions of validity are very strict) is signed between the parties. A transfer agreement only stating that « all the rights are assigned » is considered null and void.
A competitor is using a trademark which is very similar to mine. What can I do?
Before taking any step, you first have to check the extent of your rights on your sign (date of application for registration of your trademark, goods and services designated, extent of use, identical prior company name, etc.) and to do the same concerning your competitor use of the disputed sign.
Indeed, it could be very damageable to send a prior notice, or worse, to make a counterfeit claim against the competitor to discover later that he has a prior right on the sign and is therefore entitled to invalidate your trademark.
Once everything has been checked, it is recommended to put your competitor on notice to withdraw its trademark and stop its use. If there is no answer, or a negative one, the question then will be about bringing potential proceedings.
I want to use pictures available on the Internet on my own website. Is that possible?
Pictures are protected under copyright law (to the extent that they can be considered original).
In practice, it means that pictures available on the Internet are usually owned by someone, whose authorization is necessary to use the said pictures, otherwise you will be considered a counterfeiter.
Be careful with pictures bearing the indication "free of right", since they are usually not that "free", depending on the relevant license.
I am victim of slander/insult. What can I do?
You must act very quickly, since in that matter we deal with a three-month prescription, from the date of the publication of the slander. For example on the Internet, an insulting remark published on a blog on the 3rd of April 2015 will be considered un-removable from the 3rd July 2015.
Furthermore, the procedural strategy shall be determined very fast (civil or criminal proceedings) in order to stop the slander and/or obtain damages.
I would like to establish a R&D partnership with another company. How can I secure my IP rights?
In a R&D partnership project, it is essential to organize in advance:
- the confidentiality of information exchanged between the partners,
- the tasks and associated costs each partner will bear,
- the conditions under which each partner prior IP rights will be used,
- the distribution of IP rights resulting from the collaborative work of the partners and the condition under which they will potentially be commercialized in the future.
I would like to register a patent. What main issues do I have to be vigilant about?
The main issue when you consider filling a patent is confidentiality. Indeed, an invention is patentable only to the extent that it is novel and involves an inventive step. To check if these conditions are met, it is necessary to look at what existed before and what the public knew. This is what we call the state of the art. Any communication to the public before an application for registration of a patent (e.g.: publication, presentation during a show/exhibition, sale, etc.) makes the invention part of the state of the art. Therefore, the inventor may himself destroy his own right to a patent.
You then have to organize through agreements total confidentiality of any information pertaining to the invention before the application, with the members involved in its creation and/or negotiation of any potential future commercialization.
I am the author of an artistic work. How can I secure my rights?
Article L. 111-1 of the French IP Code states that « the author of a work of the mind shall enjoy on that work, by the mere fact of its creation, an exclusive incorporeal property right which shall be enforceable against all persons » to the extent that work is considered original.
It results from this provision that you have no formality to make to benefit from copyright law (contrary to a patent).
However, it might be interesting to send to the French Industrial Property office an "envelope Soleau", describing or reproducing the creation. It enables to prove with sure date, in case of dispute, that you are effectively at the origin of the creation.