A trademark is a distinctive sign that allows its owner (natural person or legal entity) to distinguish its product(s) and/or service(s ) from those of other market players, and in particular from its competitors.
Its function is to identify the origin of the product(s) and/or service(s) that it designates, i.e., it must allow consumers to easily identify the company that owns the trademark, and secondarily to build consumer loyalty if they are satisfied with the range(s) of products and/or services covered by the trademark.
It is an industrial property right that can have an important economic value for its owner since it corresponds to an asset that can be valued in the company’s balance sheet.
Many types of signs can be registered as trademarks, including:
- Verbal names: a word, a combination of words, a slogan, a surname or name, a letter, a number, etc. ;
- Figurative signs: a logo, a drawing, etc. excluding any verbal element;
- Semi-figurative signs: the combination of one or more verbal and figurative elements;
- Three-dimensional signs: the shape of a product or its packaging;
- Position trademarks: the position and size (or proportion) of the trademark in relation to the products concerned;
- Pattern signs: a set of regularly repeated elements;
- Color trademarks: a combination of colors or a shade of colors (designated by a Pantone code);
- Sound trademarks: a sound, an onomatopoeia, a noise, a succession of musical notes, etc. ;
- Movement trademarks: a change in the position of the elements of the trademark;
- Multimedia trademarks: a combination of sounds and images.
However, in order to benefit from protection under trademark law, the sign must meet several conditions of validity, including
- Be distinctive: the sign must be perceived by consumers as a trademark, and not as a decorative element, and it must be arbitrary with respect to the product(s) and/or service(s ) that it designates (thus, the sign “Pen” is not distinctive or any other synonym for a stationery product (pen) in class 16, in the same way as the sign “T-shirt” to designate a clothing product in class 25 (clothing)!
- Be in conformity with public order and good morals: obscene or racist signs cannot be registered;
- Not to be deceptive: the sign must not mislead the consumer as to the nature, quality or geographical origin of the designated product(s) and/or service(s );
- Be available: the sign must not repeat an identical or similar prior trademark for identical or similar products and/or services and benefiting from protection in the same territory (other prior rights may be involved such as a company name, trade name, sign etc.).
It is therefore recommended to conduct a search for prior art before committing to a major investment for the development and promotion of your trademark (communication, marketing, packaging, etc.).
Such a search will allow you to anticipate the risk of actions by third party owners of prior rights that could hinder your trademark application.
If a trademark application meets all the substantive and formal requirements necessary for its validity, then it will be protected under trademark law for a period of 10 years, renewable indefinitely.
This intellectual property right will have a scope that will depend on the territories concerned by the registration of the trademark.
Thus, at the time of filing the trademark application, the applicant has the choice between:
- A national trademark: its protection will be limited to the territory in which it is registered. On French territory, the national trademark must be registered with theINPI.
- A European Union trademark: its protection will be limited to the territory of the European Union (27 member states) through a single title. The European Union trademark must be filed with theEUIPO.
- An international trademark: its protection will be limited to the territories in which it is registered. The applicant can benefit from an international procedure to apply for the registration of several national or regional titles atWIPO (Madrid System).
Once the French, European Union or international trademark is accepted, the owner benefits from trademark law protection which allows him to protect his trademark against all infringements that could be made against it, and in particular acts of trademark infringement .
Above all, in addition to protecting his trademark, the owner can exploit it and make profits from it.
Indeed, he can exploit it by his own means, but he can also grant exploitation rights on his trademark through a trademark license agreement, designating one or several countries.
Thanks to these license agreements, the trademark owner will benefit from a wider visibility of his trademark, but also receive a royalty which corresponds to a financial compensation paid by the licensee in return for the authorization to exploit the trademark.
Point on distinctiveness
The following marks were found to be non-distinctive:
- DECO-BETON for waxed concrete (“cour d’appel” of Aix-en-Provence, October 19, 2011 n°10-10.284) ;
- IMESSAGE to designate an email service (Paris “cour d’appel”, September 25, 2018, No. 17-19.211).
Beware! Certain trademarks that are not distinctive at the time of filing may acquire distinctiveness through use. This is the case with the SELOGER.COM trademark: its high reputation has allowed it to acquire a distinctive character through use (Paris “cour d’appel”, October 14, 2014, No. 2013/10534).
Point of law
Article L.711-3 I. of the Intellectual Property Code gives a non-exhaustive list of prior rights that can be an obstacle to a trademark application (availability):
“I.-A trademark that infringes on prior rights effective in France, in particular, shall not bevalidly registered and, if registered, may be declared invalid:
(1) An earlier mark :
- (a) When it is identical to the earlier trademark and the goods or services it designates are identical to those for which the earlier trademark is protected;
- b) When it is identical or similar to the earlier mark and the goods or services it designates are identical or similar to those for which the earlier mark is protected, if there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier mark;
(2) an earlier registered trademark or a trademark application subject to later registration, which has a reputation in France or, in the case of a European Union trademark, a reputation in the Union, where the later trademark is identical or similar to the earlier trademark whether or not the goods or services designated by it are identical or similar to those for which the earlier trademark is registered or applied for, and where the use of the later trademark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark;
3° A name or company name, if there is a risk of confusion in the mind of the public;
(4) a trade name, sign or domain name, which is not only local in scope, if there is a risk of confusion in the mind of the public;
5° A registered geographical indication mentioned in Article L. 722-1 or an application for a geographical indication subject to the approval of its specifications and subsequent registration;
7° Rights resulting from a protected design;
8° A third party’s personality right, in particular to his family name, pseudonym or image;
9° The name, image or reputation of a local authority or a public establishment of inter-municipal cooperation;
(10) The name of a public entity, if there is a likelihood of confusion in the public mind.“
Point of law
Article 2 of the Madrid Protocol on the Grant of Protection by the International Trademark provides that :
” (1) Where an application for registration of a trademark has been filed with the Office of a contracting party, or where a mark has been registered in the register of the Office of a contracting party, the person who is the applicant for such application (hereinafter referred to as “the basic application”) or the holder of such registration (hereinafter referred to as “the basic registration”) may subject to the provisions of this Protocol, secure protection of his trademark in the territory of the Contracting Parties by obtaining the registration of that trademark in the register of the International Bureau of the World Intellectual Property Organization (hereinafter referred to as “the international registration”, “the International Register”, “the International Bureau” and “the Organization” respectively), provided that
- where the basic application has been filed with the Office of a Contracting State or the basic registration has been effected by such Office, the person who is the applicant for such application or the holder of such registration is a national of that Contracting State or is domiciled, or has a real and effective industrial or commercial establishment, in that Contracting State;
- (ii) where the basic application has been filed with the Office of a contracting organization or where the basic registration has been effected by such Office, the person who is the applicant for such application or the owner of such registration is a national of a member State of such contracting organization or is domiciled, or has a real and effective industrial or commercial establishment, in the territory of such contracting organization.
(2) The application for international registration (hereinafter referred to as “the international application”) shall be filed with the International Bureau through the Office with which the basic application was filed or through which the basic registration was effected (hereinafter referred to as “the Office of origin”), as the case may be. “
The Bouchara firm assists you in particular in :
- The development of your branding projects ;
- The strategy for registering your trademarks and the associated prior art searches ;
- The drafting of the wording of the classes of product(s) and/or service(s ) of your trademarks;
- The formalities for filing trademarksbefore the Intellectual Property Offices;
- Responses to formal notification before Intellectual Property Offices;
- Procedures relating to the life of the trademark(opposition, revocation action, nullity action);
- Maintaining, protecting and defending your trademarks;
- The strategy for extending the protection of your trademarks internationally, if necessary;
- Negotiations in your commercial relations with your partners;
- The drafting of your contracts(trademark license, trademark transfer);
- Monitoring, execution and renewal of your contracts.