The purpose of trademarks and other distinctive signs is to distinguish a company from another. The distinctive sign is therefore the first thing that customers recognize in identifying the company or brand.
A trademark is the best-known distinctive sign, but other signs exist too such as the company’s corporate name or its domain name.
Trademarks are distinctive signs used to identify the origin of a product or service. They are an intellectual property right and can have great economic value.
There are three types of trademarks:
By definition, the geographical scope of the trademark is limited to the country in which it is registered.
For instance, a French trademark will have no effect in the United Kingdom and vice versa. A trademark must abide by the law of the country in which its registration is filed.
In France, trademarks are filed at the INPI (the National Institute of Intellectual Property).
For trademark matters in other jurisdictions, our firm collaborates with its network of highly skilled local lawyers.
In general, a trademark is protected for 10 years (as in France), but it may vary from one country to another depending on the relevant laws.
Filing a Community trademark means that the trademark covers all of the Member States of the European Union.
Because of its unitary character, if the rights held on the trademark are lost in one Member State, the trademark is void across the entire EU.
A European trademark is filed at the OHIM (Office for Harmonization in the Internal Market – Trademarks and Designs) located in Alicante, Spain.
A Community trademark is protected for 10 years.
International trademarks are governed by the Madrid System.
This system, also named the Madrid Union, refers to the countries that are signatories to the Madrid Agreement (1891) and/or the Madrid Protocol (1989).
The advantage of an international trademark is that there is only one application to be filed at a single office – the WIPO (World Intellectual Property Office). This registration validates the trademark in several territories by designating the Members States of the Madrid System.
However, even though the Madrid System facilitates the registration of trademarks in different countries, the fate of the trademark in these countries depends on the applicable national legislation. An international trademark is generally protected for 10 years.
In any event, whether the trademark is national, European or international, any third party may initiate proceedings to have it revoked through a cancellation procedure if it has not been substantially used for a period of five consecutive years.
In terms of trademark protection, the first essential step is to consult a professional in order to search for prior trademarks.
Then, the trademark will have to be registered.
Consulting a professional from the date of filing of the trademark will enable the applicant to receive advice on the filing procedure and to be informed of the extension dates for a trademark in order to avoid any undue appropriation of their rights by a third party.
A company also holds other rights such as those over its name, particularly as regards its company name, its trade name, its sign and any domain names it might have.
These signs could potentially constitute prior rights enforceable against other trademarks under Article L. 711-4 of the French Intellectual Property Code which provides that:
Signs may not be adopted as trademarks where they infringe upon prior rights, particularly:
There is a lot of case law demonstrating the ability for an owner of such prior rights to enforce them against a subsequent trademark. That is why it is necessary to be extremely careful with such rights, in particular by carrying out an extensive search before registration.
It is also very important to be aware of your own proprietary rights and to know how to enforce them if necessary.
We advise and assist on the protection of distinctive signs - trademarks, domain names, business names, commercial names and signs - by providing the following services:
Negotiating and drafting transfer agreements, license agreements, trademark coexistence agreements, domain names and other distinctive signs.
Representation within the framework of: