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Brand : The necessary availability and distinctiveness…

Vanessa Bouchara

Updated on January 16, 2022

Trademark: The necessary availability and distinctiveness of the chosen sign

Before registering a trademark, it is imperative to ensure that it is available and distinctive in order to avoid any unpleasant surprises.

On the availability requirement

When a trademark is registered at the INPI, no control is carried out on possible anteriorities, relating to existing identical or similar names.

The holders of prior rights have a period of two months from the publication of the application for registration in the BOPI, to file an opposition to its registration (Art. L.712-4 of the Intellectual Property Code).

Similarly, the owner of a trademark registered at the INPI can be sued for infringement (within 5 years of the knowledge of a third party of the use of the trademark).

Thus, it is essential to perform a prior art search before filing a trademark application, in order to ensure that you are not in conflict with any prior rights.

On the requirement of distinctiveness

In order to be protected, a trademark must be able to ” distinguish the goods or services of a company from those of its competitors ” (Art.L.711-1 of the Intellectual Property Code), and be perceived as such by the consumer.

It can therefore only express a simple description of its activity.

To be distinctive, the trademark must therefore have a certain fanciful and arbitrary character in relation to the goods and services concerned. This imperative is sometimes difficult to combine with the need to have a brand that clearly expresses its positioning and the products or services offered.

Thus, the VETEMENTS trademark, which is very successful, will not meet this distinctiveness requirement and cannot be validly registered by its owner, which may have serious repercussions on his business.

It should also be noted that the FOOTBALANCE application for clothing was refused by the European Union Trademark Officefor lack of distinctive character.

Do not forget to target all the company’s products and services and to file internationally

Trademarks are essential for companies and must be protected according to the existing and prospective activity of the company, but also its territorial expansion.

For example, failure to designate jewelry as a deposit item when the company’s primary business is lingerie can cause difficulties if the company plans to expand its business.

Furthermore, it is essential to register your trademark in the countries where you are established and in strategic countries that have a habit of registering trademarks fraudulently, such as China and Turkey, which may eventually become strategic for the company.

Do you think that companies protect their brands sufficiently?

We often meet companies that have been using a brand/logo for some time without having registered a trademark. In a competitive situation, the application of trademark law is more than recommended insofar as the trademark constitutes the identity of the company.

We also meet companies that register their trademarks but the protection is not adapted to their activity. Indeed, either the choice of classes is not complete or the list of products and services covered is not adapted.

Do you regularly perform audits?

We perform two types of audits.

There is the audit of the intellectual property rights in case of fund raising, takeover or transfer of a company. Intangible assets are very often an integral part of a company sale or takeover. Before embarking on this type of operation, it is important to ensure the validity and strength of the company’s intellectual property rights.

There is the audit of the trademark and design portfolio. This involves regularly analyzing the intellectual property titles of our clients or future clients to ensure that they are all registered in the same name and address in national and international registers. This audit also serves to verify that the trademarks already registered by our clients or future clients are still adapted to their activity which may be in constant evolution.

What advice would you give to a company considering launching a new brand and has limited resources?

It is true that registering a trademark can be quite expensive, for those who do not really have the means.

However, it is important to keep in mind that the registration of a trademark gives the company an exclusive right of use and allows it to prohibit any third party from using a sign identical or similar to its own for identical or similar products and services.

In addition, a registered trademark can represent a source of revenue through licensing in return for the payment of royalties.

For this reason, we recommend that a company that intends to launch a brand proceed in stages.
1) Conduct a search for prior art among the trademarks in effect in France to ensure its availability.
2) Register your trademark in France, being careful to define the classes and to target the products and services adapted to your present and future activity.
3) Monitor its trademark once it has been filed in order to be kept informed of a later identical or similar filing and prevent its registration.
4) Take advantage of the priority period to file an international registration for the countries of interest. An international registration is more economical and easier to manage than a multitude of foreign national registrations.

Respecting these steps can contribute to considerably reduce the costs of launching, protecting and defending one’s brand and allow for a more serene management of the project.

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