What should I check before registering my French or EU trademark?
Trademark searches are a very useful tool to make sure that a trademark is available and can be filed.
The trademark registration is both a symbolic and fundamental act in the life of your project. It is through this deposit that you will announce to your competitors but also to your customers, that a product or service is being developed by your company. It should be done without errors.
Before considering the form of deposit, you should make your choice on a specific trademark type.
This trademark registration will allow you to start implementing your marketing and marketing strategy. It is therefore particularly important to check the availability of a trademark in advance in order to ensure that it meets the criteria for trademark examination, but also that it, or a similar trademark, is not already registered by a third party for identical or similar products or services.
First of all, it is important to determine the classes in which you want to register your trademark. Each class represents different products or services. The list of classes can be found on the INPI website or on the World Intellectual Property Organization website.
Filing should not be limited to the choice of class, but to the goods or services that make up the class. For example, class 28 “games; toys” may include board games, stuffed animals, or even more precisely stuffed animals in the shape of animals.
The filing of the class title does not protect the trademark for the entire class (IP Translator decision and Package trademark). Otherwise, it would be too easy to obtain extensive protection and lock the market down.
In addition, it is preferable to register the trademark for products and services that will actually be exploited. In fact, five years after the trademark filing date, a third party may have the trademark partially cancelled for products and services that are not used by the applicant, pursuant to article 714-5 of the Intellectual Property Code. We are talking about Disqualification for non-operation. Targeting the core business of the trademark as soon as it is registered limits this risk and unnecessary costs.
It is also important to determine whether you want to have a national or European Union trademark only. Indeed, in the case of a European Union trademark, it will be necessary to carry out a search for anteriorities covering the entire Community territory.
This choice depends on your business strategy. If you want to market your product or service outside France, it may be more interesting to immediately go to a European Union trademark, to limit the costs and the examination time.
In the event of a choice limited to a French trademark, it will always be possible, depending on the time spent since the filing, to simply extend the trademark to Community territory or to register, this time, a European Union trademark.
The trademark registration criteria are as follows, in accordance with articles L711-1 and following of the Intellectual Property Code:
When filing, the examiner at the INPI or the European Union Office for Intellectual Property (ex OHIM) relies on these criteria to decide whether or not to accept the trademark application.
The mark must be distinctive, which means that it must be sufficiently distant from the goods or services it designates. The repository reviewer will ensure that it is arbitrary and that it does not refer to what it refers to.
Moreover, a mark is not distinctive if it describes the product or service, if it is their common name, or if it designates the shape of the product (for figurative marks in particular).
As for deception, the trademark must also not give the impression to the customer that the product has particular characteristics or qualities if the customer does not have them (for example, it may be the origin, an element of the product or service, etc.).
The trademark must also be legal and in accordance with good morals. This criterion is less difficult and requires common sense.
Once you have ensured that the term of your choice meets the trademark registration requirements, all you have to do is consider the criterion of the availability of the trademark.
It is therefore appropriate to check the following point: has an identical or similar trademark been registered for identical or similar goods or services? This is the criterion for trademark availability.
Availability is not checked by the examiner but only by third parties who have an interest in it.
Consequently, in the case of an earlier trademark, there is a risk of being subject to a trademark proceeding.opposition (and as a result of undergoing a minimum period of six months before being certain, or not, of being able to use the trademark), or through counterfeiting proceedings (which, in addition to exposing you to risks of damage, would undermine marketing and commercial development based on this term since the launch of the project and would constitute a significant cost).
As a first step, it is advisable to research the INPI bases and OHMI/EUIPO, in the classes you've chosen for your trademark. This search may focus on trademarks that are identical or generally similar, for identical or similar products and services.
Doing this research will allow you to have a first idea of the availability of the trademark and to modify the term you want to register, if necessary.
It is also possible to go further. A more thorough and automated search for precedence may automatically identify trademarks whose spelling or phonetics are similar by taking into account all possible variations of the term chosen.
In this case, it is best to seek the help of a specialist, who can conduct a more detailed search.
It is therefore simple and necessary to carry out an initial verification of the viability of a trademark. A poor understanding of this problem could have significant financial consequences on your project and cause a delay in its execution if it is necessary to register a new trademark or even to stop all marketing of the product or service covered by the trademark initially chosen.
The time spent carrying out this analysis will never be a waste of time and will secure your investment for the rest of your project.
Once the trademark is registered, you can fight against third parties using trademarks or trade names that are similar or identical to it.
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