A trademark is the recognition element of a service or a product. It presents a dual interest, namely to protect consumers who are familiar with the quality of the purchased product or service and to protect companies against competitors who might try to imitate them. The trademark must be represented in a way that allows anyone to precisely and clearly determine the object of the protection enjoyed by the trademark owner.

In order to be registered, a trademark must first and foremost be distinctive, meaning it must resort to arbitrary signs. For example, the trademark Mont Blanc for a pen, or the trademark Apple for a computer, are arbitrary and therefore can be used to register a trademark. However, it must not be descriptive of the product or service it designates. It must not describe the quality, quantity, destination, value, or geographic origin of the goods or services it targets. The same applies if the trademark exclusively contains elements or indications that have become customary in everyday language.

It may therefore be relevant to consider the creation of an original trademark. Indeed, the original trademark may be subject to copyright protection, which will allow the accumulation of copyright and trademark protections. Concretely, you will be able to rely on two distinct legal foundations (therefore two different criteria for protection) and seek more damages in case of infringement. This accumulation will also add more value to your company.

The trademark must not contain certain elements prohibited by the Paris Convention, notably the coats of arms of countries. It is therefore not possible to register a trademark containing the tricolor flag.

To be registered, the trademark cannot be contrary to public order. Thus, in a case known as “puta madre,” the judges held that even if the expression “puta madre” is positive in Spanish, it is understood as an insult in French and therefore infringes on public order. This trademark was consequently rejected and cannot be protected. The solution was the same under Italian law. Furthermore, the solution is shared in the United States, and the trademark “Pschit” was refused because it sounds like “shit” in English. Public order is therefore understood in a linguistic and cultural context which should be considered before registering a trademark with the ambition to shine internationally.

It is also impossible to register a trademark that is likely to deceive the public as to the nature, quality, or geographical origin of a product or service.

A trademark cannot be registered if it is done in bad faith. This is notably the case when the applicant was perfectly aware of the existence of the name and wished to register it before the legitimate user.

It is also necessary to check for prior rights before filing a trademark application. A trademark will thus be declared null if it is identical to a prior mark and the designated products or services are identical. The INPI (National Institute of Industrial Property) has established interpretation rules, notably holding that the beginning of the mark is more striking for the public than the end of the mark, that similar sounds can create a risk of confusion even if the spellings are different, or that differences in colors are ineffective in dismissing the allegation of trademark infringement. The same applies when it is identical or similar to a prior mark and the products or services are identical or similar if there is, in the public’s mind, a risk of confusion. It will also not be possible to register a trademark if the sign considered is already renowned in France or for a mark within the European Union, or if the designated products or services are identical or similar.

A trademark cannot be registered if it is similar or identical to a corporate name (i.e., the name of a company as it appears on its registration certificate) and if there is a risk of confusion in the minds of the public. Regarding trade names, the priority will be opposable only if it is nationally known. Consequently, a trade name known regionally cannot constitute an opposable priority to a trademark. A trademark cannot be registered if it creates a risk of confusion with a geographical indication, a copyright, a protected design or model, a third party’s right of personality including their family name, name, image, or even with the reputation of a territorial community or an inter-municipal public cooperation establishment or the name of a public entity if there is a risk of confusion in the minds of the public.

Once these various checks are completed, the trademark can be registered with the National Institute of Industrial Property for a French trademark or with the European Union Intellectual Property Office for the registration of a European trademark. In the first case, the trademark will only be registered for the French territory (an option can be taken for the territory of French Polynesia) and in the second case, the trademark will be registered for the entire territory of the European Union.

Once the trademark is registered, it is published in the official journal of the chosen institution. In the case of a French trademark application, third parties have a right of opposition for a period of two months from the publication. For European trademarks, the period is three months from publication. During this period, the trademark is opposable but may be subject to an opposition procedure allowing a third party to challenge the Intellectual Property Office on the grounds of a prior right it holds, rendering the registered mark null. The opposition procedure may be an opportunity for the parties to negotiate, for example, to limit the scope of the new mark or to negotiate a coexistence agreement for both marks to exist simultaneously. In the absence of an agreement between the parties, they exchange conclusions online on the platforms of intellectual property offices. They must provide evidence for the applicant that there is a risk of confusion and for the new applicant that there is no risk of confusion.

When registering the trademark, it is necessary to determine the products and/or services for which the trademark will be registered. This allows for the selection of classes applicable to the trademark in accordance with the so-called Nice Classification.

The debate often revolves around the question of the relevant public and its risk of confusion. For example, our firm has been involved in a case where two trademarks had been registered in the pharmaceutical sector. Given that it is a particular market because only laboratories were involved, the European Union Intellectual Property Office held that the level of attention was particularly high and therefore the two relatively similar marks did not present a risk of confusion because the buyer was perfectly able to distinguish between the old and the new mark.

If the trademark is registered for France, it will still be possible to register the trademark for the European Union or another State (provided that the State has ratified the Paris Convention) within a period of six months while benefiting from the French priority date. However, it is common that when applicants plan to use the trademark simultaneously in several territories, they immediately file the trademark for the various territories concerned. The trademark is protected for a duration of ten years. It is renewable indefinitely. Any modification of the sign or extension of the list of designated products or services requires a new application.

It is also possible to proceed with an international trademark application, either by approaching national trademark offices or by sending the application to the World Intellectual Property Organization (WIPO) which will act as an intermediary.

However, it is not useful to register a trademark for a country where it would not be used. Indeed, the trademark may be subject to revocation if it is not used for a period of 5 years.

The firm remains at your disposal for any questions regarding trademarks.