Trademark and trade name: why you need both

When starting a business, trademark filing is often deferred, particularly when the intended mark is identical to the trade name. The assumption is that the trade name provides sufficient protection. This is a common misconception.

Trade name and trademark: two distinct forms of protection

A trade name identifies the business on its official documents (correspondence, invoices, quotations). It serves as an identifier vis-à-vis other entities in the same sector, requires no formalities and belongs to the business from first use. It may be shared by companies operating in different geographical areas.

A trademark, by contrast, is a sign capable of graphic representation whose purpose is to distinguish specific goods or services. It confers protection over an entire national or EU territory, preventing a competitor from using the same name in the same geographical area.

The specific advantages of a registered trademark

A trademark opens enforcement avenues that a trade name alone does not provide.

The trademark owner has access to opposition proceedings before the INPI or EUIPO: a fast, non-judicial and less costly procedure than court proceedings (€325 at the INPI). It enables the owner to challenge a conflicting mark before it is even registered.

The trademark also gives access to infringement proceedings: there is no need to prove fault on the part of the third party — a mere likelihood of confusion suffices. Seizure proceedings (saisie-contrefaçon) allow a bailiff to record any IP infringement. It is not even necessary to prove loss (although loss is taken into account when assessing damages). Infringement is therefore easier to establish than unfair competition, and nothing prevents the owner from relying on unfair competition as an alternative ground.

Without a trademark, it remains possible to challenge a filing on the basis of the prior trade name (Article L711-4 of the French Intellectual Property Code), but the claimant must prove that the trade name is known throughout the national territory — a burden of proof that is often difficult for a young company to meet.

The trade name: limited to unfair competition

Without a trademark, protection of the trade name is limited to an action in unfair competition (general principles of tortious liability). The claimant must prove fault (disparagement, deliberate creation of a likelihood of confusion, disorganisation of the business, parasitism), loss, and a causal link between the two. Unfair competition is a more complex tool than infringement and does not benefit from seizure proceedings. For the filing process, see the trademark filing guide and the intellectual property services page.

Conclusion

Trademark filing is a modest additional cost when setting up a business, but the long-term gains in protection justify the investment. Relying solely on the trade name would be a short-sighted approach, potentially prejudicial in the event of a subsequent dispute. If you are setting up your business and need to secure your name, book a call.

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