Brands, labels, and other distinguishing marks are fundamentally important for companies. They represent the company with an image. To create and choose a mark is very important, which is why it is equally important to register and protect it. Lawyers Picovschi will review the legal aspects of a trademark with you.
Trademarks, defined
A trademark is defined by the Code of Intellectual Property as a graphic identifying mark or sign that serves to distinguish the products or services of an individual or corporate body.
"A trademark of a trade or service is a sign capable of graphic representation that distinguishes the goods or services of individual or legal entity.”
Including:
- The name, in all forms including words, derivative words, family or geographic names, pseudonyms, letters, characters, and acronyms.
- Audible signs, such as sounds or musical phrases.
- Abstract signs, such as designs, labels, seals, reliefs, holograms, logos, synthesized images, shapes, product packaging, arrangements, combinations or shades of colors.
Each business needs something to identify and distinguish itself from its competitors, whether it is a catchy name, brand…or a trademark.
A business has the ability to register a trademark.
A trademark allows a company to personalize its products and differentiate them from the competition.
Choosing a trademark is fairly complex, because it must be chosen strategically to attract consumers to the company.
It is the trademark that reflects a company’s image, but it is also a legal tool to avoid possible exploitation and infringement by a competitor.
Eligibility Conditions for Trademarks
A company’s brand can take many forms; it can be a combination of words or letters, a family name, etc...
Branding can be audial or visual…Or, it can encompass all of these things and be a complex brand.
It must, in some way, graphically represent the company, but above all, it must meet certain conditions of substance.
It must distinguish its products and services from others’.
However, the brand does not necessarily have to describe the product. It does not have to be generic or typical for the type of product it represents.
The brand cannot have misleading or illicit elements. It must not misrepresent the nature, quality, or origin of a product. It cannot be against the law or offend morality and public order.
Also, verify that the brand/mark does not infringe on a prior right of a third party.
The process of registering a trademark
Any company can register a trademark; it is even possible to file by proxy.
In France the file is sent to the INPI, the national institute of intellectual property.
On a larger scale, in the EU, the case is sent to the OHIM, the office for standardization in internal markets, or to similar bodies in other EU states.
A correctly completed application will include the applicant’s identifying information, the mark seeking trademark protections, and the products or services represented as well as their general market category.
For a trademark to be registered, officials will review the file, making sure there are no missing pieces, and then they will attest that the file is eligible for further review. However, they do not look into prior rights and consider previous cases—this is the responsibility of the party that files. If the file is published and it turns out that a third party’s rights have been infringed as a result, they can notify the INPI or OHIM. If it the mark had been filed previously, the holder may oppose the new mark. If this opposition is well founded, the application will be reject. If not, the mark will be registered.
If an application is approved, the trademark holder will have property rights retroactively, starting from the date of filing. Trademark rights are effective for ten years renewable. It ceases if not renewed, nullified, or revoked.
It is always possible for a third party, even after a mark has been registered, to make a case for it to be declared invalid for reasons such as lack of originality, illegality, misrepresentation, or infringement.
Revocation is a penalty that prohibits the use of a mark for an uninterrupted period of five years, unless the punishable action committed was actually just.
