A technology business operating across three European markets discovered that a former distributor had filed a trademark application in France using the company's core brand name. The filing covered identical Nice classification categories. It had been made weeks after the distribution agreement expired. By the time the client learned of the registration, the mark was already published. The window for a standard opposition was closing fast.
IP portfolio recovery in France involving a bad-faith registration requires a challenge before the Institut National de la Propriété Industrielle (INPI. France's national intellectual property office) or before the competent civil courts, depending on the stage of the dispute. A bad-faith claim must demonstrate that the registrant knew of the prior user's rights at the time of filing. Proceedings can run from several months for an INPI-level challenge to two or more years when pursued before a Tribunal judiciaire (specialist civil court).
This case study traces the strategy used to recover the client's IP position, the complications encountered along the way, and the lessons that transfer directly to similar cross-border matters in France.
Client profile and the legal challenge
The client was a société par actions simplifiée (SAS, a simplified joint-stock company under French commercial legislation) incorporated outside France but operating there through a local distribution network. Its brand had been used commercially in France for several years before the dispute arose. No French trademark application had been filed. The business had relied on its EU-wide registration, assuming it provided sufficient protection at the national level.
The former distributor – itself a société à responsabilité limitée (SARL, a French limited liability company) – filed the conflicting trademark application shortly after the distribution agreement lapsed. The filing covered the same goods classes under the Classification de Nice (Nice classification) as the client's EU mark. The distributor's stated intention appeared to be leveraging the registration as a negotiating tool for a new commercial arrangement.
The core legal challenge was threefold. First, the EU registration, while valid, did not automatically override a subsequently filed French national mark without active enforcement. Second, the bad-faith ground under French intellectual property legislation requires substantive evidence – courts do not infer bad faith from timing alone. Third, the client needed to act quickly. A delay beyond the opposition window would have forced the matter into full civil proceedings, significantly increasing cost and duration.
For related considerations on how French intellectual property rules interact with technology assets, see our AI and technology law practice in France, which covers the intersection of IP and digital product regulation.
Strategy and key milestones
The team adopted a two-track approach: an opposition on relative grounds before INPI, running in parallel with a preservation strategy before the civil courts. The rationale was straightforward. The opposition alone would resolve the registration question. But it would not stop the distributor from using the mark commercially while proceedings were pending. A parallel precautionary measure – a saisie-contrefaçon (IP seizure order, an evidence-gathering and preservation measure specific to French intellectual property practice) – could freeze the opposing party's ability to exploit the registration commercially.
Milestone one was filing the opposition within the statutory period. This required assembling prior use evidence: invoices, marketing materials, distribution records, and correspondence showing the client's commercial presence in France before the disputed filing date. The EU registration certificate served as the primary registered right underpinning the opposition.
Milestone two was securing a saisie-contrefaçon through a huissier de justice (a French enforcement officer with powers to conduct civil seizures and serve formal legal process). This step required an ex parte application before the Tribunal judiciaire. The order was granted within days of the application. The enforcement officer documented the distributor's commercial use of the disputed mark across digital channels and physical premises.
Milestone three was presenting the bad-faith case. Under French commercial legislation and IP legislation, bad faith at the time of filing is assessed by reference to the registrant's actual knowledge of the prior user's rights. The distribution agreement itself was the strongest piece of evidence. It expressly acknowledged the client's ownership of the brand. The distributor could not credibly claim ignorance.
INPI upheld the opposition. The disputed registration was refused. The parallel civil track was stayed once the opposition succeeded, avoiding the cost of a full infringement claim before the Cour de cassation (France's Supreme Court) appellate pathway.
For a broader overview of the firm's IP enforcement capabilities in France, visit our intellectual property practice page for France.
To discuss a similar situation in France or another jurisdiction, contact us at info@ferrazwhitmore.com.
Complications encountered
Three complications arose during the matter that were not anticipated at the outset.
The first was a jurisdictional question over which court could hear the parallel civil application. The distributor contested the venue chosen, arguing that the matter should proceed before a different regional court. This objection was resolved within six weeks, but it consumed time and resources at a critical stage.
The second complication involved the Nice classification scope. The distributor had filed in slightly broader sub-categories than the client's EU mark. This created a partial overlap rather than an identical conflict. The opposition team had to demonstrate that the broader filing was nonetheless likely to cause confusion – and that the breadth of the filing itself evidenced opportunistic intent.
The third complication was evidentiary. Several key pieces of prior use documentation were held by the former distributor under the expired agreement. Obtaining these through formal legal process required a separate application. The Code de commerce (French Commercial Code) provides mechanisms to compel production of commercial documents in civil proceedings, but the process added several weeks to the timeline.
A parallel IP recovery matter with a Portuguese dimension is explored in our IP portfolio recovery case study for Portugal. This illustrates how the civil law systems of the two jurisdictions compare on the bad-faith registration question.
Transferable lessons for cross-border IP matters
Three lessons from this matter apply directly to businesses managing IP portfolios across multiple jurisdictions.
Register nationally, even when you hold an EU mark. An EU trademark provides broad territorial coverage, but enforcement at the national level in France is not automatic. Local registrations create a cleaner, faster path to opposition proceedings. Businesses expanding through distribution networks should file national marks before appointing local partners – not after the relationship sours.
Distribution agreements must address IP ownership explicitly. The agreement in this matter contained an acknowledgment of brand ownership. That clause proved decisive. Many standard distribution agreements treat IP provisions as boilerplate. In practice, a clear, dated acknowledgment of the licensor's rights is the single most valuable piece of evidence in a subsequent bad-faith challenge. A lawyer in France advising on distribution arrangements should treat IP clauses as substantive – not administrative.
Act within the opposition window. The INPI opposition route is substantially faster and less costly than civil litigation. Missing the opposition period forces the matter into the courts, where timelines extend and costs escalate. International businesses that learn of a conflicting registration in France should obtain specialist advice from a law firm in France within days, not weeks. The window is fixed and cannot be extended by agreement.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark opposition proceedings, bad-faith registration challenges, saisie-contrefaçon applications, and IP portfolio recovery across French and EU jurisdictions. The firm combines Portuguese civil law expertise with English common law tradition to serve clients operating across multiple legal systems. Our IP team includes practitioners with direct experience before INPI and before specialist IP chambers of the Tribunal judiciaire in France. We work with technology companies, international distributors, and institutional investors who require results-oriented IP counsel. To explore your options for IP protection or recovery in France, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.