Intellectual property rights warning

Published onSeptember 2013

In France, the enforcement of IP rights is based on the first-to-file principle when in Common Law countries, the IP system is based on the first-to-invent or first-to-use principle.

To warn the public of the existence or registration of trademarks, designs, patents or copyrights or to enforce those rights and obtain damages in case of infringement, the IP rights have to be filed and registered before the French patent and trademark office.

Therefore, unlike in Common Law countries, the French law does not subject the opposability of IP rights to the apposition of such symbols as ®, ™, © or such expressions as “patent pending” or “patent granted” which use remains optional. To avoid becoming good faith infringers, right seekers must carry out availability searches among the corresponding registers before starting any exploitation.

If they do not have any third-party legal effects, undue use of such symbols could be considered as deceiving for the public and be punished as an unfair commercial practice.

Hence, © will identify the current authors of creative works and the warning “patent pending” (pat. pend.) will be marked only on products or methods that are really covered by the patent application.

The symbol ® is to be used only for a registered and alive trademark, while the ™ (trademark on goods) sign may be used, regardless of whether the trademark has been filed or registered. ™ may be useful to clearly indicate that a sign is used as a trademark and not as a generic designation in order to avoid its revocation.

If their use is not required in legal terms, these symbols are often affixed by IP rights owners as a guarantee of quality and reliability for customers and for deterrence or strategic and tactical reasons against competitors, although the generalization of this practice tends to diminish those effects.