General trademark information of Guadeloupe

Registration is required to establish rights in a trademark in Guadeloupe; this is a "first-to-file" jurisdiction.

• Use of an unregistered mark for any goods or services is legal.

• The following legislation regarding plain packaging has been enacted in this jurisdiction:

A. Time Frame for Obtaining Registration in Guadeloupe

• The approximate time from application to registration (for a regular prosecution, without opposition) is:

Maximum six months from application date.

B. Advantages of Registration

• The benefits of registering a trademark include the following:
  • it is the sole means of obtaining rights in or title to the trademark

• it provides prima facie evidence of ownership and validity

• it provides regional, national, and/or local protection
• it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark

• it allows the registrant access to bring actions in particular courts

• it helps to deter others from unlawfully using the trademark;
• it encourages licensees and provides the opportunity to generate royalties through licensing.

• The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:
  • words;
  • names;
  • devices;
  • certain three-dimensional shapes;
  • colors;
  • slogans;
  • sounds;
  • trade dress/get-up;
  • holograms;
  • motion.
  •  Graphic representation is no longer required. The trademark shall be represented in any appropriate form using generally available technology, as long as it can be reproduced on the Register in a clear, precise, self-contained, easily accessible, intelligible, durable, and objective manner so as to enable the competent authorities and the public to determine with clarity and precision the subject matter of the protection afforded to its proprietor. Thus far, applicants' attempts to provide acceptable representation for smells, taste, and touch have failed.

• The special requirements for the registration of three-dimensional shapes are:

• There are no special requirements for the registration of colors.

• There are no special requirements for the registration of sounds.

• There are no special requirements for the registration of trade dress.

• There are no special requirements for the registration of holograms.

• The special requirements for the registration of motion are:

• Marks registered in black and white or grayscale are construed broadly to protect the mark both as registered and in other color combinations.

• In addition to regular trademark registrations, the following types of trademarks are registrable:
  • collective marks;
  • certification marks;
  • well-known marks;
  • service marks.

• Retail services as such are not registrable, but the following (or a comparable recitation) is permitted: the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods. (Consult a local attorney for additional advice.)

• The following are not registrable as trademarks:
  • marks contrary to moral standards or public order;
  • generic terms;
  • names, flags, or symbols of states, nations, regions, or international organizations;
  • non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
  • marks that function principally as geographic location names (but not geographical indications or appellations of origin)

• Geographical indications (GIs) are protected in this jurisdiction.

• GIs are protected by way of:
  • special laws for the protection of geographical indications or appellations of origin;
  • laws against unfair competition;
  • consumer protection laws;
  • specific laws or decrees that recognize individual geographical indications.

• The following products or categories are subject to GI protection in this jurisdiction:

• While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
  • save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights.

• An applicant does not benefit from pre-filing use of a trademark.

• When a mark is not registered, use of that mark may provide the following benefits:
  • Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

• Famous and/or well-known marks are protected via the following mechanism(s):
  • a determination by the court (other than one resulting from an action for infringement);
  •  Famous and/or well-known marks (in the sense of Article 6bis of the Paris Union Convention) may serve as a ground for opposition against a subsequent trademark application, or for invalidation of a subsequent trademark registration. In addition, such marks are specifically protected via the civil liability mechanism.

• This jurisdiction is a member of the following international treaties relating to intellectual property:
  • Paris Convention;
  • Trademark Law Treaty;
  • Singapore Treaty;
  • Madrid Agreement;
  • Madrid Protocol;
  • Nice Agreement;
  • Vienna Agreement;
  • Lisbon Agreement.

• If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

• Joint applicants are permitted in this jurisdiction.

• Neither actual use nor intent to use is required for application.

• The following information is required to COMPLETE an application:
  • name and address of applicant;
  • state or country of incorporation;
  • description of trademark

• representation of trademark (a depiction of the mark an applicant seeks to register);
• list of goods/services;
• power of attorney

• official filing fee;
• priority claim, where priority of an earlier application is claimed.
•  application to extend protection to French Polynesia, if so desired.

• While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
  • name and address of applicant;
  • state or country of incorporation;
  • representation of trademark (a depiction of the mark an applicant seeks to register);
  • list of goods/services;
  • official filing fee.

• The list of goods and services in this jurisdiction may specify:
  • the relevant class heading

• a list of names commonly used in the trade for the specific goods or services of interest;
• the relevant entire (long) alphabetical class listing.

• The relevant entire (long) alphabetical class listing is appropriate to use in applications for:
  • goods and/or services.

• The following number of copies of the trademark must be submitted:

• In this jurisdiction, the following types of registration are available:
  • regional;
  • national;
  • international.

• This jurisdiction is a party to both the Madrid Protocol and the Madrid Agreement and may be designated in international applications.

• This country is a member of the European Union; a European Union Trade Mark registration is effective in this jurisdiction. (See the entry for European Union.)

• No (other) multinational regional registrations are available in this jurisdiction.

• An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid System.)

• The official file cannot be accessed online.

• Applications are not officially searched as to prior trademarks.

• If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
• If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
• An International Registration can be based on a national application or registration in this jurisdiction.

• This jurisdiction uses the Nice Classification System.

• If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services, but separate applications are also permitted.

• For a multi-class application, the applicant must pay class fees on a per-class basis.

• An application to register a trademark may be filed directly in this jurisdiction by:
  • the applicant, even if not a citizen of or domiciled in the jurisdiction

• a trademark representative/attorney/agent, even if not a citizen of or domiciled in the jurisdiction

• The filing particulars of an application are made available to the public.

• The filing particulars are made available to the public:
  • through publication and online.

• The following application details are made available to the public:
  • mark;
  • name of applicant;
  • address of applicant;
  • state or country of incorporation of applicant;
  • citizenship of applicant;
  • application number;
  • application date;
  • goods/services;
  • priority claim information;
  • representation of trademark.

• Applications are examined in respect of:
  • formalities: i.e., for compliance with the filing requirements;
  • classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
  • clarity: i.e., that descriptions are clear and understandable;
  • descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
  • distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;
  • deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services).

• This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

• The order of the application process is as follows:
  • publication, examination, registration.

• Accelerated examination may not be requested.

• The following rights are established by a pending application:
  • the filing date of the application establishes a home filing date for purposes of priority;
  • the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application;
  • the pending application establishes prima facie proof of ownership of a trademark.

• Opposition is available.

• Opposition is conducted pre-grant.

• The following can be grounds for opposition:
  • proprietary rights, such as an earlier conflicting registration

• rights under Article 6bis of the Paris Convention (notorious or well-known mark);
• rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
• rights under Article 8 of the Paris Convention (trade names);
• the mark consists of a geographical indication

•  the mark infringes the name, image or reputation of a territorial community or the name of a public entity.

• An application is published for opposition purposes before formal examination of the application.

• The opposition period begins on the following date:

• The opposition period ends on the following date:

• The following parties may initiate an opposition:
  • the owner of an earlier right;
  • a licensee

•  entities of defense or management of products that benefit from an indication of origin.

• Oppositions can be filed online.

• Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

• An application can be assigned.

• A registration can be assigned.

• An assignment of an application must be for the entire territory covered by the application.

• An assignment of a registration must be for the entire territory covered by the registration.

• An assignment of an application can be for some or all of the goods or services listed in the application.

• An assignment of a registration can be for some or all of the goods or services listed in the registration.

• Goodwill need not be included in an assignment of an application.

• Goodwill need not be included in an assignment of a registration.

• An assignment document for an application requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned

• effective date of the assignment;
• signature by assignor;
• signature by assignee;
• consideration (either actual or nominal)

•  A written agreement is required for validity purposes of the assignment. Otherwise, the French Intellectual Property Code does not provide specific requirements. The validity requirements for a trademark assignment result from contract law.

• An assignment document for a registration requires:
  • name of assignor;
  • address of assignor;
  • citizenship of assignor;
  • name of assignee;
  • address of assignee;
  • citizenship of assignee;
  • details of the trademark being assigned;
  • goods and services being assigned;
  • territory being assigned

• effective date of the assignment;
• signature by assignor;
• consideration (either actual or nominal)

•  A written agreement is required for validity purposes of the assignment. Otherwise, the French Intellectual Property Code does not provide specific requirements. The validity requirements for a trademark assignment result from contract law.

• Legal verification of a written assignment document of an application is not required.

• Legal verification of a written assignment document of a registration is not required.

• An assignment of an application need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

• An assignment of a registration need not be recorded, but if it is not recorded the assignment may not be effective against a subsequently dated but recorded assignment.

• Use of a mark that is the subject of an application can be licensed.

• Use of a registered mark can be licensed.

• In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

• A license of an application can be made for a portion of the territory covered by the application.

• A license of a registration can be made for a portion of the territory covered by the registration.

• A license of an application can be for some or all of the goods or services listed in the application.

• A license of a registration can be for some or all of the goods or services listed in the registration.

• A license of an application can be exclusive (only one licensee, with the owner excluded).
• A license of an application can be sole (only one licensee and the owner).
• A license of an application can be non-exclusive (multiple licensees and the owner).

• A license of a registration can be exclusive (only one licensee, with the owner excluded).
• A license of a registration can be sole (only one licensee and the owner).
• A license of a registration can be non-exclusive (multiple licensees and the owner).

• Use by a related company of a mark that is the subject of an application need not be licensed.

• Use by a related company of a registered mark need not be licensed.

• A license of an application can be made with a time limitation.

• A license of a registration can be made with or without a time limitation.

• A license document for an application requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license

• signature by licensor;
• signature by licensee.

• A license document for a registration requires:
  • name of licensor;
  • address of licensor;
  • citizenship of licensor;
  • name of licensee;
  • address of licensee;
  • citizenship of licensee;
  • details of the trademark to be licensed;
  • goods and services being licensed;
  • commencement date of the license;
  • term of the license;
  • if the license has no limitation of time, a statement so indicating;
  • territory of the license

• simple signature by licensor (see below for execution requirements);
• simple signature by licensee (see below for execution requirements).
•  Note: There is no relevant provision under trademark law. This issue is a contractual one, and the conditions shall be those applicable to contracts.

• Legal verification of a written agreement to license an application is not required.

• A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• A license of an application need not be recorded to be effective.

• A license of an application need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.
• Recordation of a license of a registration need not be recorded, but if it is not recorded the license may not be effective against a subsequently dated but recorded license.

• The license for a renewed registration need not be re-recorded.

• Legal verification of a written agreement to license a registration is not required.

• The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:
  • deed of assignment, without further formalities;
  • certificate of proof of change of name, without further formalities;
  • certificate of merger, without further formalities.

• The requirements regarding the recordal of updated addresses on trademark records are as follows:

• The requirements for recording liens against trademark records, such as security interests, are as follows:

• A fee is not required for issuance of the registration.

• The following documentation is required for issuance of the registration:
  • none.

• The following rights are established by registration:
  • the exclusive right to use the registered trademark;
  • the right to oppose subsequent conflicting applications;
  • the right to bring a cancellation action against a subsequent conflicting registration;
  • the right to sue for infringement against confusingly similar third-party trademark use;
  • the right to license third parties to use the trademark;
  • the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;
  • the right to obtain damages for infringement.

• The Roman alphabet is used to represent the official language(s) of this jurisdiction.

• A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:
  • never.

• The territorial limit of registration is:
  • Metropolitan France, Corsica
  • Overseas Departments and Territories ("DROM"): Guadeloupe, French Guyana, Martinique, Mayotte, Réunion
  • Overseas Collectivities ("COM"): Saint-Pierre-et-Miquelon, Wallis et Futuna, Saint-Barthélemy, Saint-Martin, la Nouvelle-Calédonie, la Polynésie française ainsi que les Terres australes et antarctiques françaises.
  • Protection in French Polynesia is subject to a specific extension.

• The initial term of a registration is:
  • 10 years.

• The beginning of the term of a registration is calculated from:
  • the application date.

• Marking is not compulsory for registered trademarks, but is advisable because:

• Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.
  •  There is no compulsory form for the marking, provided it is not deceptive. Using the ® sign if the trademark is applied for but not registered may be deemed deceptive.

• The use of ® is not legally recognized.

• The legal consequences of false or misleading marking are:

• Attack on the ground of non-use is available.

• To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

• To satisfy the use requirement, the amount of use:
  • must be on a commercial scale.

• Use of the trademark must occur in:
  • this jurisdiction.

• The consequences of a trademark's not being used are as follows:

• Periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are not required.

• An action for non-use of a trademark can be brought by:
  •  any third party, without any legitimate interest requirement.

• Non-use can be excused under the following circumstances:
  •  legal or factual circumstances arising independently of the will of the owner as the result of which the use of the trademark becomes impossible or unreasonable.

• Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:
  • filed an action for cancellation of the trademark on the ground of non-use.

• Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

• Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

• Cancellation is available.

• The following can be grounds for cancellation:
  • proprietary rights, such as an earlier conflicting registration;
  • the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services;
  • the mark is not distinctive;
  • the mark is misleading, deceptive, or disparaging;
  • the mark is functional;
  • breach of copyright;
  • rights under Article 6bis of the Paris Convention (notorious or well-known mark);
  • rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);
  • rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);
  • rights under Article 8 of the Paris Convention (trade names);
  • registered design rights;
  • rights in a personal name;
  • the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
  • the mark consists of a geographical indication;
  • the mark is against public policy or principles of morality;
  • the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;
  • the mark includes a badge or emblem of particular public interest;
  • the mark is used in a misleading manner;
  • the mark is prohibited in this jurisdiction;
  • the application for or registration of the mark was made in bad faith.

• There is no deadline for bringing a cancellation action; a cancellation action can be brought at any time.

• The following parties may bring a cancellation action:
  • any interested party;
  • the owner of an earlier right;
  • a licensee.

• The following documentation is required for renewal:
  • none.

• The first renewal date of a registration is:
  • 10 years from the application filing date.

• Subsequent renewals last for the following period of time:
  •  ten years as from the anniversary date.

• The renewal pre-payment period is:
  • no more than the following number of months before the renewal date:

• There is a grace period for renewing registrations once the renewal date has expired.

• The grace period after the renewal date has expired is:
  • 6 months.

• The penalty for late renewal is:
  •  additional official fees to be paid.

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