The Toubon law relating to the use of French language applies in France since August 4, 1994. As Trademarks fall under specific provisions of this law, we deem important to explain the extent of the measure to apply so as to avoid any practical excess and fear of our foreign readers on the subject.
I.The Toubon Law does not provide for the registration of a foreign term as a trademark in France :
The Toubon Law is not a basis for refusal by the French Trademarks Office (INPI) concerning trademarks composed of foreign word(s).
Any public legal person, private legal person having a public mission or private legal and natural persons not entitled of a public mission can file as French trademark any term of foreign origin without having the application rejected because of the language used for the sign.
II.The Toubon Law only provides for the use of a foreign term (whether filed / registered as trademark or not) :
The key-point of the Toubon law is the use of a foreign word.
1) Public legal person or private legal person having a public law mission are never allowed to use a foreign term. However, this prohibition does not apply when (i) there is no official equivalent French word of the foreign term (ii) and/or the trademark used was filed before the enforcement of the Toubon law.
2) Private legal persons (not entitled of a public mission) and any natural persons do not face any limitation or restriction as to the use of a trademark constituted of or including a foreign term when it is used for designating directly a particular good or service. However, the use of a term that is not meant to designate a good (or a service) – i.e. to be affixed on the goods to distinguish them from those of other undertakings – is subject to restrictions.
Any mention, message or slogan which does not designate directly a good or a service has to be translated into French, no matter what the means of communication is (label, packaging, notice of use, written/audio-visual advertising, posting on public highways,).
NIKE can file the trademark NIKE JUST DO IT without (i) having to provide any translation before the INPI and (i) risking an official action as the Toubon Law does not concern the trademark application itself.
When using said trademark in an advertising, the Toubon Law brings to the following requirements of use :
-the term NIKE is the sole element of the trademark filed which is used as a trademark to designate the products; -however, the denomination JUST DO IT is used as a slogan, and not to designate specific products.
Consequently, in its advertising, NIKE has to include the French translation of the sole slogan JUST DO IT. We hope the above will clarify the measures to perform in order to comply with the Toubon law when France gets concerns in communication plans.