Choosing and registering your trademark: the keys to effective protection

Have you found the perfect name for your company, the ideal logo that captures the essence of your business? It's an exciting and fundamental step. But before you plunge headlong into printing business cards or creating your website, a little legal thinking is in order. This sign, however brilliant it may be, can it really become your protected trademark ? And how do you ensure that it becomes official? Neglecting these questions early on can lead to costly and time-consuming complications later on. This article guides you through the essential steps: checking that your sign is suitable to become a trademark (distinctiveness), ensuring that it does not conflict with existing rights (availability), and understanding the broad outlines of the registration procedure.

The essential criterion: the distinctiveness of your sign

For a sign to be registered as a trademark, it must first of all be distinctive. What does this mean in practice? Article L.711-1 of the French Intellectual Property Code states that a trademark must enable you to distinguish your products or services from those of your competitors. It must function as an indicator of commercial origin. Think of it as a family name for your products: it lets you know which "family" (company) they come from.

Consequently, a sign cannot simply be descriptive of what you are selling. The Code (article L.711-2) is very clear and prohibits the registration of signs that are :

• Generic or common : You cannot register the word "Chaise" to sell chairs, or "Boulangerie" for a bakery. These terms belong to everyday language and must remain freely usable by everyone.
• Description: A sign cannot simply describe an essential characteristic of the product or service. For example, "Super Comfortable" for mattresses, "100% Pure Juice" for drinks, or "Fast Delivery" for a courier service would probably be refused because they directly describe what is being offered.

The aim of these bans is simple: to prevent one company monopolising the terms needed to describe an activity or its qualities, thereby hindering competition.

So where does the right strategy lie? We need to find a sign that is :

• Arbitrary : In other words, with no direct link to the designated products or services. The famous "Apple" example for computers is a perfect illustration.
• Evocative : The sign can suggest a quality, an idea, a sensation linked to the product, but without describing it directly. "Jaguar" for cars suggests speed and elegance, but does not describe a car. "Kleenex" suggests cleanliness without describing a tissue.
• A fancy name: An invented word ("Kodak", "Google") is inherently distinctive because it has no pre-existing meaning.

Case law, particularly in Europe, has shown that a slight modification or unusual structure of common terms can sometimes be enough to create distinctiveness (the famous example being "Baby-Dry" for nappies). It's a fine balance to strike.

Some types of sign are intrinsically more difficult to establish as distinctive. A simple geometric shape, a single colour (except in very exceptional cases such as Louboutin red under certain conditions), or a shape imposed by the very nature of the product (the shape of a fruit to sell fruit) will have difficulty being perceived as a trademark by the consumer without very intensive use that would have given them this distinctiveness. Similarly, an advertising slogan will often be seen as a promotional message rather than an indicator of origin.

The choice of a distinctive sign is therefore the first cornerstone of effective protection. A weak or descriptive sign will not only be difficult to register, but also harder to defend later on.

Checking availability: an essential step

Is your sign distinctive? It's perfect. But is it available at ? This is the second fundamental question. Registering a trademark that is too similar to a trademark or other sign already used by a third party for similar activities exposes you to conflicts: opposition when you register, legal action for infringement or unfair competition later. Imagine having to abandon a name or logo after having invested time and money in it... Prevention is better than cure!

An availability check, often referred to as a prior art search, involves ensuring that your sign does not infringe prior rights belonging to others. What are these potential rights?

• Earlier trademarks : This is the most common case. You need to look for trademarks that are identical or similar to yours, that have been filed or registered. before your own filing date, for products or services identical or similar to those you are targeting (article L.711-3 of the CPI). The key question is risk of confusion for the average consumer. If the customer is likely to confuse the two marks, or to think that they come from the same company (or related companies), then your sign is probably not available. This assessment takes into account the visual, phonetic and conceptual similarity of the signs, as well as the similarity of the goods/services concerned.
• Company and trade names : A company's official name or the name under which it carries on its business may constitute prior art if these names are known in the territory (national or sometimes local if your business is limited) and there is a risk of confusion with your trade mark for similar activities.
• . domain names A domain name (.fr, .com...) actively used for a competing or similar activity can also be an obstacle.
• Geographical indications (PDO/PGI) : Obviously, you cannot register "Champagne" as a trademark for sparkling wine that is not sparkling wine.
• Other rights : More rarely, a copyright on an original logo, a registered design for a particular shape, or even the name or image of a famous person or local authority may constitute prior rights.

How do you carry out this search? The online databases of industrial property offices (such as that of the INPI) provide an initial approach, particularly for identical trademarks. However, these searches have their limitations: they do not cover all rights (trade names, copyright, etc.), they are difficult to use to identify similarities (not just identity), and above all, interpreting the likelihood of confusion requires legal expertise. A professional search carried out by an industrial property attorney or a lawyer who is an expert in the field is strongly recommended for a thorough and reliable analysis. It's an investment that can save you a lot of disappointment.

The procedure for registering a trademark in France (simplified)

Once your sign has been chosen and its availability reasonably assured, comes the stage of official registration. In France, theNational Institute of Industrial Property (INPI) which is responsible for receiving applications and registering national trademarks.

To register your trademark, you will need to provide a number of essential elements:

• A clear representation of your sign (the exact word, the logo image file, etc.).
• La precise list of products and/or services for which you are requesting protection. This is known as the "wording".
• L'full identification of the applicant (you or your company).

Choosing products and services is an important strategic. It refers to the Nice classificationThis is an international system that divides all economic activities into 45 classes (34 for products, 11 for services). You must select the relevant classes for your current activity and your reasonable short/medium-term development plans. Why is this so important?

1. Your trademark will only be protected for the goods and services listed in your application.
2. Choosing too many classes increases filing and renewal costs.
3. Wording that is too broad increases the risk of conflicts with earlier trademarks.
4. Above all, you will need to prove "genuine use" of your trademark in order to each product or service listed within 5 years of registration, on pain of having your rights cancelled (forfeiture) for these non-exploited activities (find out how to use and defend your brand). So you need to aim just right!

Once the application has been filed and the fees have been paid, the INPI carries out a review of the application. review :

• It checks the formal compliance of the application.
• It examines whether the trademark meets the conditions for validity absolute Is it distinctive? Isn't it descriptive, generic or contrary to public policy?
• Please note: INPI does not check the availability of your trademark in relation to prior rights (trademarks, company names, etc.). It is up to you to have done this beforehand.

If the initial examination is positive, the INPI publish your request in the Bulletin Officiel de la Propriété Industrielle (BOPI). This publication opens a period of two months during which holders of prior rights (who monitor new applications) can file opposition to register your trademark if they believe it infringes their rights. This is the phase when potential conflicts relating to availability come to light.

If no opposition is filed, or if an opposition is rejected, and if the INPI has not raised any insurmountable objections, your trademark is registered. You will then receive a registration certificate. Your right of ownership is officially established for a period of 10 yearsrenewable indefinitely.

What about the European Union Trade Mark (EUM)?

If your business covers more than one country in the European Union, you can consider filing a European Union Trade Mark (EUM). The procedure is carried out by theEuropean Union Intellectual Property Office (EUIPO)based in Alicante, Spain.

The main advantage is thata single request and a single registration give you uniform protection throughout the world. all Member States in the EU. This can be simpler and potentially cheaper than multiplying national filings if you are targeting a large number of European countries.

However, TIN has one major disadvantage: its unitary. This is often referred to as the "all or nothing" principle. If a ground for refusal (for example, a lack of distinctiveness in a specific language) or an opposition based on a valid prior right in a single EU country is selected, the entire TIN application is rejected. It cannot be registered for some countries and refused for others (although there are mechanisms for converting applications into national applications in the event of rejection).

The choice between a national application (via the INPI), a TIN (via the EUIPO), or a combination of the two, or even an international extension via the Madrid System for countries outside the EU, therefore depends entirely on your commercial strategy, your budget and your risk assessment. It's an important decision that deserves careful consideration, ideally with the help of a consultant.

The process of choosing and registering a trademark may seem complex, but each step is designed to maximise the legal security of this essential asset. It also offers opportunities for economic value. Neglecting distinctiveness or availability can have unfortunate consequences.

Need help assessing the distinctiveness of your sign, carrying out an in-depth prior art search, choosing the right classes or navigating the filing procedure in France or the European Union? For a tailor-made legal supportcontact our office.

Sources

• Code de la Propriété Intellectuelle (CPI), in particular articles L.711-1, L.711-2, L.711-3, L.712-1, L.712-4.
• Regulation (EU) 2017/1001 on the European Union trade mark, in particular Articles 4, 7, 8.
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.