According to French Trademark laws and regulations, a trademark may be applied for on behalf of a company that is not incorporated yet, i.e. on behalf of a company that is still being established.
This particular type of application is very popular in France. It represented over 7,000 applications in 2015. And it is easy understanding why.
It gives an individual the possibility to file a trademark application in the name of a company before it is even registered at the Official Trade and Company Register. It consequently allows to get trademark protection for a company without awaiting the end of administrative formalities for its creation and incorporation, thus limiting the chance that another identical or highly similar trademark is filed earlier.
Applicants must be careful though. In a case involving Pharrell Williams, the First Instance Civil Court of Paris recently reminded that a trademark application is a judicial document serving the legal purpose of obtaining a property title (IP title) over a determined sign. As such, a trademark application filed on behalf of a company that is still being established commits the person or persons that applied for the mark unless said company, once it is incorporated, takes on responsibility for it. In this case, the trademark application is considered as being made in the name of the company from the beginning (Pharrell Williams v/ Walter L., 17 March 2016, TGI Paris, 3rd chamber, 1st section, case No. 2014/14099).
Let us see what are the options then.
In case the company is incorporated
The articles of incorporation must contain a provision detailing all actions made on behalf of the company before it was incorporated, and the trademark application must be listed among these actions.
Once the company is registered at the Official Trade and Company Register, the trademark application must be corrected. The incorporation of the company must be registered before the French Patent and Trademark Office (INPI). It is a condition for the opposability of the company’s rights in the trademark.
In case the company is not incorporated
Whatever the reason why the company is not incorporated in the end, you would not want to lose your trademark application or trademark registration.
The trademark application or registration must be corrected as well, but in this case, in favour of the individual or individuals that applied for the mark.
The Pharrell Williams case
In the case before the First Instance Civil Court of Paris, PHARRELL French trademark application applied on behalf of a French company PHARRELL that was being established was considered null from the origin and the trademark registration was cancelled for all the designated goods and services because precisely because the above formalities were not observed.
We believe PHARRELL trademark application was in any case null for being filed in bad faith as well since the so-called owner of the mark tried to blackmail Pharrell Williams into repurchasing the mark in France which he considered was “fair for our two parts and could give to you the whole property in all over the world”.
What you need to remember
It is possible to file a French trademark application in the name of a company before it is even incorporated. But you must not give a false statement to the French Patent and Trademark Office when filing such an application.
If the application must be made on behalf of a future company, you must make sure that the company is really being established. If the future company is only a vague project, if it is not tangible yet, it is recommended you file the trademark application in the name of real individuals.
In any case, [INSCRIPTA] can help you set and implement the best strategy for protecting your mark or your brand in France or in the EU.