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Five essential questions before filing a trademark

How do I choose a name? How do I protect my trademark? Can I protect a logo? are just a few of the many questions entrepreneurs are bound to ask themselves.

Choosing a trademark is an essential stage in the life of your company.

It should be done with care: a well-chosen trademark is a powerful tool while a badly chosen trademark can lead to very unpleasant consequences (damages, trademark change, product removal, dispute fees, etc.) that do not fade (much) over time.

1. What do I need a trademark for?

A trademark, i.e. a sign filed as a trademark for instance with your National Intellectual Property Institute, has a three-pronged impact: commercial, legal and Financial.

  • Commercially, the trademark enables you to set your products and services apart from those of your competitors, on a given territory.

It is your responsibility to determine whether the name you have in mind will fulfil this function. If it will only be used to designate a holding, it may not be necessary to file it as a trademark.

  • Legally, with a trademark you will have access to a broad range of efficient legal tools to help you combat those who would like to reproduce or imitate it, i.e. counterfeiters.

You may use a sign without filing it as a brand, but it will enjoy weaker protection.

  • Financially, a trademark is an asset that can be enhanced, transferred, granted under licence and serve as guarantee for financing.

Top tip:

  • Get help!
    Choosing and filing a trademark are more complicated than they seem, and these choices commit your company for a certain amount of time. It is therefore important to get professional help, i.e. a lawyer specialising in intellectual property or in industrial property, who will be able to guide you in this research and the next steps of the procedure.
2. How do I choose my trademark?

A trademark generally comprises one or more words, a logo or a combination of the two.

To constitute a valid trademark, a sign must:

  • Be legal and not openly affront good moral standards. Insults, references to hard drugs and social hate etc. should be avoided at all costs.
  • Be distinctive. Steer clear of descriptive signs, i.e. that designate your product or service (e.g. “top chocolate” to designate chocolate).
  • Not be misleading. Banish terms that could deceive the consumer on the nature, characteristics or origin of your product or service.
  • Not jeopardise the rights of third parties. These rights may be a trademark, a corporate name, a domain name, copyright, etc.

Top tip:

  • Be different!
    Avoid common words, work instead on neologisms, unexpected word associations, your surname, etc.
    The more distinguishable your trademark is from others, the easier it will be to protect.
3. Is my trademark available?

A trademark is available if it does not reproduce or imitate a prior sign for identical or similar products or services.

Before commencing the steps to file your trademark, you must therefore ensure that the trademark you have in mind is available, by performing or asking for the performance of a clearance search.

It generally comprises two stages:

  • An “identical” clearance search: checks to ensure the same trademark is not found by search engines on the Internet or in the national trademarks database, and
  • A “similarity” clearance search: checks on similar existing trademarks.

In both cases, understanding the results requires an in-depth legal analysis. It is therefore once again strongly advisable to get professional help, bearing in mind that it is materially practically impossible to personally conduct a similarity clearance search.

Where applicable, it will also be necessary to extend the search to countries where you would like to file your trademark for possible future expansion.

Tip top:

  • Find several trademark names!
    Finding an available trademark is complex. To avoid spending too much time and energy on this stage, consider coming up with five or ten names you like from the very start.

And keep going if none is available: it is better to spend time at the beginning and find an available trademark, rather than moving quickly through the process with a badly secured trademark.

4. What products or services should it designate?

To file a trademark, you must draft the list of products and services that the trademark will cover.
Such products and trademarks will belong to classes, and together will determine the cost of trademark filing.

This stage is crucial because:

  • The field of protection will be restricted to the products and services mentioned when filing your trademark, and
  • If you forget one… it will not be possible to add it at a later time. You will have to file a new trademark.

It is therefore paramount to determine your current and future needs when designating a certain number of these products and services.

To help you, you can browse the international Nice Classification (NCL).

Top tip:

  • Be specific and comprehensive!

Designating your products and services is by no means easy. It is a question of listing the products and services sufficiently broadly to gain efficient protection, and yet sufficiently specifically to not give competitors or third parties the opportunity to file a complaint against you.

5. Where and how do I file a trademark?

You must quickly think of the countries in which you wish to file your trademark to avoid third parties from taking it in your stead and compelling you to a costly redress process.

Important information:

  • The trademark can first be filed in your country with your national intellectual property institute (INPI in France), and after a 6-month period (called a “délai de priorité”) it can be extended abroad while benefiting from the initial filing date in France.
  • This is a cooling-off period: you have 6 months to decide whether and where you wish to extend the trademark filing.
  • The trademark can also be filed in the European Union as a whole with the European Union Intellectual Property Office (EUIPO).
  • It may also be extended to other countries within the same 6-month cooling-off period.
  • If you are advised by a lawyer or a counsel in industrial property, he or she will be indicated on the trademark file as an “authorised representative”.
  • He or she will keep you abreast of all the events and lead-times related to the filing, registration and renewal of the trademark.

Top tip:

  • File your trademark in the manme of the company!

A professional investor will never accept that a trademark remains the property of the founder, and will demand its transfer to the company.

Save time and energy by filing the trademark directly under the name of your company.

A few figures
  • 10 years: duration of trademark protection, renewable indefinitely,
  • 5 years: duration of trademark non-use at the end of which a third party can apply for it to be removed from the trademark register,
  • 210 euros: minimum tax payable for the filing of a French trademark in three classes,
  • 1,050 euros: tax payable for the filing of a trademark in the European Union in 3 classes (850 euros for 1 class).

On your (trade)marks…!