Is it absolutely necessary to register the trademark one is using or planning to use? This is a question that entrepreneurs and future entrepreneurs regularly ask themselves. There are several reasons for them to ask themselves:
- "Is my trademark really protectable? Is it worth a shot at filing?"
- "I don't really have any money to spend in this at the beginning of my business, I'd rather avoid this kind of expense if possible."
- "What if my business goes under before three years? This deposit will have been useless..."
- "I'm not going to try to stop other people from using it, so I don't think it's necessary to record it."
Trademark registration is not mandatory...
A deposit is never mandatory. It is perfectly possible to use a trademark without having registered it, because there is no rule of law that prevents anyone from doing so. In fact, many people use unregistered trademarks: this is particularly true in the field of catering or shop sales.
The problem is that in France, the rights to a trademark are not acquired through its use, but through its registration.
... but it is strongly recommended
The brand as a legal shield
Thanks to your trademark registration, you will obtain a monopoly (theoretical, because you still need to the brand is available at the time of filing) on a name. This means that people after you who would like to use it cannot in principle do so (provided you defend your rights). In any case, these persons will not be able to prevent you from using that name, since you will have a prior right to theirs.
Thus, even if you do not defend your trademark, it protects you against uses subsequent to yours.
Brand development
Your trademark, through your use of it, will grow in value along with your company. In case of resale of your company, it will constitute a valuable intangible asset, which can reach very interesting sums depending on the communication efforts you will have made on it, its notoriety, the geographical extent of its use, the turnover achieved, etc...
If your company fails, too, the brand can still be sold separately from the fund: you can then at least hope to recoup the price you originally invested. There are websites that specialise in selling brands, such as :
An inexpensive and sustainable investment
A brand does not represent a very expensive investment, a fortiori because it requires no maintenance (or very little, in specific cases) at the INPI.
Since the brand has a 10-year life span, you will only have to worry about new fees at the time of renewal. There are no annual fees to pay to keep the trademark in force, unlike patents.
Alternatives to trademark registration
If you definitely do not want to register a trademark, you can dispose of prior rights through other means:
- Copyright on your logo Copyright : copyright is obtained by the simple fact of creation and does not require any registration (copyright is not valid in France). The only drawback is that you must be able to prove the date of creation of your logo to be able to defend it. To do this, you can opt for the Soleau envelope (a double-entry envelope available from the INPI, which certifies a date on which your logo existed), or for a registered letter to yourself, without opening it on receipt. The postmark will be taken as proof and you will thus be able to demonstrate that on the date of this mail, you had a copyright on this logo.
- An exploited domain name if you use a domain name that corresponds to your trademark, but without having registered it, be aware that the domain name can be invoked as a prior right against a later third party who would try to copy you or prevent you from using it. If your domain name is reserved only for your name, without any site or any associated use, then it does not constitute a valid prior right.
- Un corporate name used As well as the domain name, the company name that you registered at the registry when your company was created constitutes a prior right that can be used to oppose a later trademark, provided that it is used. If the company has been created but has no activity, the anteriority is invalid.
To be accompanied at a lower cost
In order for the trademark to be able to fulfil its defensive and offensive role effectively and to be properly valued, it must be registered properly. However, the errors committed by applicants are numerous and almost systematic.
However, it is now possible to be accompanied, at very attractive rates, by a trademark law professional. He knows analyse the anteriorities opposable to your projectand is fully conversant with the drafting techniques that will enable it to offer the broadest and most adequate protection to your trademark, while protecting it from third party claims.
To go further...
Check out our articles on the topics covered here :