First, whenever deciding not to file in a foreign jurisdiction after the six-month priority date (i.e. six months after your French filing date), you risk a third party establishing senior rights by filing a similar trademark for similar/related goods/services. That being said, spending on international IP protection can be an unwise drain on many startups.
When advising clients on foreign trademark protection, I have them consider several factors.
- Do you have concrete plans for foreign countries (i.e. sales, hiring sales reps, marketing)? If not, consider waiting.
- How is the French prosecution proceeding? Any issues?
- Do you have any particular issues with infringers?
- Does an investor require you to have protection?
WIPO vs. filing in each country directly
- An internatinal trademark application under the Madrid protocol (i.e. in WIPO) can streamline the foreign filing process. However, any resulting registration is susceptible to cancllation within its first five years if your French application is not allowed or is canceled. So, if you are having any issue in France, avoid the Madrid Protocol.
- The alternative is to file directly in each country. You will be paying middlemen but the results will be better. A qualified IP attorney should have a network of vetted, qualified foreign trademark attorneys to whom they can refer you.
If you need any more advice about balancing your needs versus expense, I would be happy to help.