Logo

The logo is a particular graphic / visual.

In France, subject to originality, it will be protected on the basis of copyright.

It can also be legally protected under trademark law (it will be a registration of a figurative or semi-figurative trademark ).

Protection of the logo as a trademark

It can also be protected as a trademark, if it fulfills the essential function of a trademark, i.e. to distinguish the products and/or services of a company from those of its competitors (article
L.711-1 of the Intellectual Property Code
).

When a logo is registered as a trademark, it must therefore be distinctive.

Thus, trademarks with logos are regularly refused on this basis, in particular :

• for goods and services related to sports in Classes 28 and 41 (EUIPO, April 6, 2022, R-018544392);
• for bars and restaurant services in Class 43 (EUIPO, April 6, 2022, R-018567480).

Under these conditions, despite the presence of figurative elements, the Offices may consider that a registered trademark is not protectable.

The Offices and in particular theINPI in France, tend to adopt a stricter analysis of the distinctive character of a sign.

If a logo could be registered a few years ago, it is not certain that it will be accepted for registration by the examiner today.

Furthermore, when considering the use of a logo, it is advisable to carry out a prior art search in order to ensure that third parties do not have identical or similar prior rights that could be opposed.

Indeed, oppositions and nullity actions, based mainly on the visual aspect of trademarks, are very common.

For example, it was considered that there was a risk of confusion between the trademarks

and

(EUIPO, August 6, 2021, Opp. B3125200).

However, if there is a register of prior trademarks, there is no register of copyrights and the search for prior art will therefore not be exhaustive.

The necessary transfer of copyright

Independently of the protection as a trademark which is essential for a logo, it is important to transfer the rights on the logo when it is created by an employee, by a graphic designer, by a freelance designer or by a creation company.

In fact, as far as copyrights are concerned, the transfer of the owner’s rights is not automatic and must be formalized in writing.

It is thus advisable to be particularly vigilant and to regularize a contract of transfer of copyright with the creator of the logo, only holder of the copyright.

For all these steps, it is recommended to call upon a A lawyer or a counsel (IPC) specialized in intellectual property who will know how to optimize the strategy of protection and defense of your creations with regard to the commercial stakes, the requirements of the Offices, the provisions of the Intellectual Property Code etc…

The Bouchara Law firm assists you in particular in :

• Conducting prior art searches;
• The filing of your logo as a trademark before the Intellectual Property Offices (INPI for France, EUIPO for the European Union etc…) and the follow-up of the registration procedure;
• Drafting and negotiation of clauses in contracts for the transfer of copyrights;
• The protection and defense of your intellectual property rights (intellectual works, trademarks, designs, etc.) before the Offices(INPI, EUIPO, etc.) and the Courts;
• Opposition proceedings, nullity action, seizure for infringement, counterfeiting action, unfair competition action, etc…