Posté le 4 November 2021 dans Intellectual property law.
The trademark is one of the distinctive signs of a company and therefore allows to distinguish the company from its competitors and facilitates the recognition of its products by consumers. As such, it represents a central asset of a company’s development strategy and constitutes an element of its valuation.
A company has several reasons for registering a trademark:
• The brand is an element that enhances the intangible heritage of the company (which can increase the value of the company),
• The brand makes it possible to claim a monopoly for a period of 10 years (indefinitely renewable),
• The brand makes it possible to defend its products against third parties,
• The brand makes it possible to stand out vis-à-vis customers and prospects.
Trademark law governs the conditions of registration as well as the rights of trademark owners.
I – CHOOSING A BRAND
Before registering a trademark, it is imperative to determine whether there are prior rights.
This search can be carried out on the INPI site but it may be useful to carry out the same check on the EUIPO website (competent for the entire territory of the European Union) and possibly on the site of the WIPO for the world.
This research is by nature incomplete because:
• Some brands may not yet appear on the databases,
• The database does not include well-known marks (a well-known mark constitutes a mark known to a very large fraction of the public concerned).
It will also be necessary to check the anteriority of the company name and trade name. To do this, it is appropriate to carry out a check on the infogreffe.fr website for France and for a European brand with each country’s secretary of State (registrar). If the search on the Infogreffe website does not display any relevant results for the trademark, it may be possible to register it.
It will also be necessary to check that there is no protected designation of origin, no copyright on the brand and no name. Anyone bearing the name of the mark could oppose the registration of the mark. It would therefore be advisable to check the existence of this name and possibly obtain a written authorization.
II – GROUNDS FOR REFUSAL BY TRADEMARKS
After carrying out the prior research, it should be considered whether the trademark may be refused by the INPI. The INPI will refuse registration in the following cases:
• In the event of lack of distinctiveness: in the LINDT case, it was held that the little rabbit was not distinctive for an Easter chocolate. It is therefore advisable not to use a sign that is descriptive of the activity (as such, the Apple brand to designate computers is not descriptive and has a strong distinctive character);
• It is also necessary that the trademark may represented (which poses a practical difficulty for the registration of an olfactory mark).
The mark must not be illegal and must not be contrary to public order. As such, the mark “puta madre” – which constitutes a term that is nevertheless positive although familiar in Spanish– being misunderstood by the French public who sees it as an insult, was considered to be contrary to French public order and consequently was rejected.
Special signs: Certain special signs have been registered with the World Intellectual Property Organization and, notably, the French flag cannot be registered as a trademark.
III – TRADEMARK REGISTRATION
Before registering the trademark, it will also be necessary to determine its scope, i.e. the products and/or services to which it is intended to apply. It is indeed unnecessarily expensive to register a trademark for classes in which the company does not intend to sell a product or service.
In terms of strategy, if the company has a substantial brand budget at its disposal, it may be useful to register a brand family (i.e. a set of brands similar to each others).
It will also be necessary to obtain the transfer of copyright if the name or logo is original. Indeed, any use and in particular any reproduction of an original logo would constitute an infringement of copyright. In any case, an invoice or an order contract does not constitute a valid assignment contract and does not protect against a possible civil or criminal action for copyright infringement.
Once these questions have been resolved, it will be possible to file the trademark either for the European Union with the EUIPO or only for the French territory with the INPI.
IV – REGISTRATION FEES
The registration fees are substantially different for a registration only on French territory on the one hand and for European territory on the other hand.
For France, it will be necessary to pay the sum of 190€ for a class (i.e. a product or a service) then 40€ per additional class. However, the protection will be limited to the French territory.
On the other hand, for the EUIPO, it will be necessary to pay the sum of €850 for one class, an additional €50 for another class and an additional €150 for each additional class. However, registering a trademark at the EUIPO will offer protection for the entire territory of the European Union.
V – THE RIGHTS CONFERRED BY THE BRAND
The trademark is protected for a period of 10 years, whether it is a French trademark or a European trademark.
The trademark makes it possible to prohibit third parties from using it in their business lives. Trademark law does not, however, prohibit any use of the mark in a context that does not relate to business life.
Thus in the LA BASOCHE case it was held that a union newsletter cannot infringe a trademark and the union was therefore authorized to use the LA BASOCHE trademark. This solution does not limit freedom of expression. The trademark is protected only in its trademark function, i.e. to distinguish a product.
The right to a trademark makes it possible to oppose in the event of a risk of confusion. The likelihood of confusion arises when the consumer may be led to make a mistake. This is the consumer of average attention with regard to the product to be purchased. It is obvious that if the product or service is expensive, the average consumer attention will be considered higher than if the product is not expensive. Everything will be a case-by-case analysis knowing that the risk of confusion is interpreted globally according to the similarity and the average attention of the consumer. Thus, the higher the average attention, the more the judges will forgive a similarity between the marks.
VI – SANCTIONS IN CASE OF TRADEMARK INFRINGEMENT
Trademark counterfeiting is punishable by 3 years in prison and €300,000 in fines under criminal penalties. Damages and interest may be pronounced.