RESPOND TO INPI OBJECTION | FRENCH TRADEMARK OFFICE ACTION

For assistance responding to an INPI objection, contact French trademark attorneys specializing in intellectual property law at GOMIS & LACKER: +33 1 47 63 63 35.

See our answers to frequently asked questions about trademark registration in France.

RESPONDING TO AN INPI OBJECTION: FRENCH TRADEMARK OFFICE ACTION

The INPI (French Patent and Trademark Office) may issue an objection—known as a notification d’irrégularités—when the examiner determines that a trademark application must be amended before it can proceed to registration. For foreign applicants unfamiliar with French prosecution practice, responding correctly within the strict deadline is critical to avoid rejection.

GOMIS & LACKER assists US and international companies in responding to INPI objections, ensuring applications are amended strategically without unnecessarily limiting trademark rights.

DEADLINE: ONE MONTH TO RESPOND TO THE INPI OBJECTION

The INPI sends a registered letter containing the objection notice and setting a one-month deadline to respond. This deadline can be extended by one additional month upon simple request made before the initial deadline expires.

The objection notice specifies which issues must be addressed. The examiner may suggest solutions, but this is not mandatory.

Type of Objection Response Deadline Extension Available
Formal deficiencies 1 month +1 month on request
Substantive objections 2 months +1 month on request

COMMON GROUNDS FOR INPI OBJECTIONS

FORMAL DEFICIENCIES

  • Missing power of attorney: Required when there are multiple applicants not represented by an attorney
  • Outstanding fees: Unpaid or insufficient payment of the filing fee
  • Electronic filing errors: Missing signature or incomplete submission

GOODS AND SERVICES SPECIFICATION ISSUES

The INPI can be quite particular about terms included in the goods and services specification. Objections typically concern:

INCORRECT CLASSIFICATION

The Nice Classification serves an administrative purpose and should not affect the scope of protection. However, adding a new class requires payment of an additional fee—currently €40 per class beyond the first three for French national trademarks.

The same service, depending on wording, may fall into different classes. For example:

  • “Electronic storage of data” → Class 42
  • “Providing access to databases” → Class 38

VAGUE OR IMPRECISE TERMS

Most INPI objections concern wording that the examiner considers too vague. Critical point: When responding, do not narrow the term more than necessary. An overly restrictive amendment would limit your trademark rights when seeking to enforce them later.

LIMITS ON WHAT CAN BE AMENDED

French trademark law prohibits certain amendments after filing:

  • Cannot alter the trademark itself
  • Cannot expand the list of goods and services
  • Cannot change the applicant’s name or address
  • Must address only the issues raised by the INPI—no other modifications permitted

CONSEQUENCES OF FAILING TO RESPOND

If objections are not addressed within the prescribed deadline, the Director General of INPI may reject the application in whole or in part. This rejection is then published and becomes final unless appealed to the competent Court of Appeal.

WHY WORK WITH A FRENCH TRADEMARK ATTORNEY

While not legally required, working with experienced French trademark counsel provides significant advantages:

  • Pre-filing strategy: Anticipate objectionable terms and avoid them before filing
  • Strategic amendments: Address examiner concerns without unnecessarily limiting rights
  • Nice Classification expertise: Ensure proper classification while maximizing coverage
  • Deadline management: Critical for foreign applicants unfamiliar with INPI procedures
  • Future enforcement: A well-drafted specification strengthens enforcement options

CONTACT GOMIS & LACKER

With over 20 years of experience filing complex trademarks for demanding clients, the GOMIS & LACKER law firm can assist you at every stage—whether responding to an INPI objection, filing strategically to avoid objections, or protecting your intellectual property rights in France, Europe, and worldwide.

Contact us for a quote or to schedule a consultation.