How the INPI Examines Trade Marks: The “No Ex Officio” Rule and the 2-Month Opposition Window

France’s trade mark examination system operates on a principle that often surprises applicants from countries where the registry actively blocks conflicting marks: the French National Institute of Industrial Property (Institut National de la Propriété Industrielle, INPI) does not refuse applications ex officio on relative grounds. This means that even if a new application is identical to an existing registration for the same goods, the INPI will not block it unless the owner of the earlier right takes action. The burden of policing the register falls entirely on existing rights holders, and the window for action is a strict 2-month opposition period.

The Legal Framework: The Code de la Propriété Intellectuelle (CPI)

France’s trade mark system is governed by Book VII of the Code de la Propriété Intellectuelle (Intellectual Property Code, or CPI), as substantially revised by Ordinance No. 2019-1169 of November 13, 2019. This ordinance transposed EU Directive 2015/2436 into French law, modernising the system and aligning it with the European Union trade mark framework at the EUIPO. The reform, often referred to as part of the “PACTE Law” package, reshaped opposition and cancellation procedures and came fully into force on April 1, 2020.

The INPI’s role is clear: it examines trade mark applications for absolute grounds for refusal and publishes them for opposition. It does not conduct ex officio examination of relative grounds — that is, it does not compare the application against prior registrations and refuse it on the basis of potential conflicts.

What the INPI Does Examine: Absolute Grounds

The INPI examines every application ex officio for compliance with the absolute grounds for refusal set out in Article L.711-2 of the CPI. These include:

• Signs incapable of constituting a trade mark (Article L.711-2, 1°): Signs that do not meet the definition of a trade mark under Article L.711-1.
• Lack of distinctive character (Article L.711-2, 2°): Signs devoid of distinctive character for the goods or services claimed.
• Descriptiveness (Article L.711-2, 3°): Signs composed exclusively of elements that describe a characteristic of the goods or services (discussed in detail in a separate article).
• Generic terms (Article L.711-2, 4°): Signs that have become customary in the current language or established trade practices.
• Functional shapes (Article L.711-2, 5°): Signs consisting exclusively of the shape or characteristic imposed by the nature of the goods, necessary for a technical result, or conferring substantial value.
• Protected emblems and insignia (Article L.711-2, 6°): State emblems, official hallmarks, and emblems of international organisations.
• Marks contrary to public order or morality (Article L.711-2, 7°).
• Deceptive marks (Article L.711-2, 8°): Signs likely to mislead the public as to the nature, quality, or geographical origin of the goods or services.
• Protected geographical indications and appellations of origin (Article L.711-2, 9°).
• Plant variety names (Article L.711-2, 10°).
• Bad faith filings (Article L.711-2, 11°): Applications filed in bad faith by the applicant (discussed in a separate article).

If the INPI identifies an absolute ground for refusal, it issues a provisional refusal (notification d’irrégularité) and the applicant generally has one month to respond with arguments or amendments.

What the INPI Does Not Examine: Relative Grounds

The INPI does not refuse applications ex officio on the basis of prior conflicting rights. It will not compare the new application against existing trade mark registrations, company names, domain names, or any other prior rights. Even if the new application is identical to a registered mark for identical goods, the INPI will allow it to proceed to publication unless a third party intervenes.

Unlike the Spanish OEPM, the INPI does not conduct a courtesy electronic search to notify potentially affected prior owners. The publication of the application in the Bulletin Officiel de la Propriété Industrielle (BOPI) is the only notification mechanism. Prior owners who are not actively monitoring the BOPI will not learn of the conflicting application until it is already registered — at which point the only remedies are invalidation or revocation proceedings.

The 2-Month Opposition Window

Once the INPI publishes the trade mark application in the BOPI (typically within three to six weeks of filing), a strict 2-month opposition period begins. During this window:

• Any holder of prior rights listed in Article L.712-4 of the CPI may file an opposition. Since the 2019 reform, the range of opposable prior rights has expanded significantly.
• Opposition may be based on a broad range of earlier rights, including: registered trade marks (French, EU, and international designating France); well-known trade marks under Article 6bis of the Paris Convention; company names and trade names; domain names; appellations of origin and geographical indications; the name of a public entity (if confusion risk exists); copyright; and rights arising from protected designs.
• Since the 2019 reform, an opponent may invoke multiple prior rights in a single opposition, which significantly reduces costs compared to the previous regime where separate oppositions were required for each right.

The Opposition Procedure

The opposition procedure before the INPI operates as follows:

• Filing: The opposition must be filed within 2 months of BOPI publication, accompanied by the official fee (€400 per opposition as of 2024). The opponent may initially file a “formal” opposition and has one additional month to submit the full statement of grounds and supporting evidence.
• Adversarial phase: The INPI notifies the applicant, who has a period to respond. The parties may exchange up to three rounds of written observations each. This adversarial phase is a significant improvement over the pre-2019 procedure, which was more limited.
• Oral observations: Either party may request an oral hearing before the INPI, a feature not available at the EUIPO.
• Proof of use: If the earlier mark relied upon in the opposition has been registered for more than five years at the filing date of the contested application, the applicant may require the opponent to prove genuine use. If the opponent fails, the opposition is dismissed for the goods and services lacking proof of use.
• Suspension: The parties may jointly request suspension of the proceedings for four months, renewable twice, to allow for amicable settlement.
• Decision: The INPI must render its decision within three months of the close of the adversarial phase. If no decision is issued within this period, the opposition is deemed rejected (the “silence is tantamount to rejection” principle). The total duration of the procedure is typically between five and thirteen months.

Post-Registration Remedies

If a prior rights holder misses the 2-month opposition window, the available remedies are:

• Invalidation proceedings before the INPI: Since April 1, 2020, the INPI has exclusive jurisdiction over administrative actions for the invalidation of registered trade marks based on absolute grounds and on certain relative grounds (prior trade marks, well-known marks, trade names, etc.). Any person may bring an invalidity action on absolute grounds without demonstrating a specific legal interest.
• Court proceedings: The judicial courts (Tribunaux Judiciaires) retain exclusive jurisdiction over invalidity actions based on certain prior rights (copyright, designs, personality rights), counterclaims in infringement proceedings, and cases where enforcement measures are already underway.

Strategic Recommendations

• Implement a professional watch service: The INPI provides no courtesy notification to prior owners. Systematic monitoring of the BOPI is the only way to detect conflicting applications in time to oppose. This is non-negotiable for serious brand owners in France.
• Act within the 2-month window: Opposition before the INPI is far cheaper and faster than post-registration invalidation. Missing the deadline significantly increases costs and complexity.
• Leverage the expanded opposition grounds: The 2019 reform allows opposition based on a wider range of prior rights (company names, domain names, GIs) and permits multiple rights in a single opposition. Use these tools strategically.
• Use the proof of use defence: If you face an opposition based on a mark registered for more than five years, require the opponent to prove genuine use. This can eliminate the opposition entirely.
• Consider INPI invalidation for missed deadlines: If you missed the opposition window, the INPI’s administrative invalidation procedure (available since April 2020) is faster and cheaper than court proceedings.

Common Mistakes

• Assuming the INPI will block conflicting marks: It will not. The no-ex-officio rule means the INPI publishes applications without checking for prior conflicts.
• Waiting for a notification that never comes: Unlike Spain’s OEPM, the INPI does not notify prior owners of potentially conflicting applications. Without a watch service, conflicts will go undetected.
• Missing the 2-month opposition deadline: The window is strict and non-extendable. Late discovery means resorting to invalidation proceedings.
• Filing separate oppositions for each prior right: Since 2019, multiple prior rights can be consolidated into a single opposition. Filing separately wastes money.
• Failing to request proof of use: When the opponent’s mark has been registered for over five years, the proof of use requirement is a powerful defence that applicants often overlook.

Key Takeaway

France’s no-ex-officio system places the entire burden of defending prior rights on trade mark owners. The INPI examines absolute grounds and publishes applications for opposition, but it will not refuse an application based on prior conflicting rights unless an opposition is filed. The 2-month window following BOPI publication is the critical moment for action — and without active monitoring, most rights holders will miss it entirely. For brand owners in France, a professional watch service, prompt opposition strategy, and awareness of the expanded post-2019 procedural tools are essential to maintaining effective trade mark protection.