[fusion_builder_container hundred_percent="no " equal_height_columns="no " menu_anchor= " " hide_on_mobile="small-visibility,medium-visibility,large-visibility " class= " " id= " " background_color= " " background_image= " " background_position="center center " background_repeat="no-repeat " fade="no " background_parallax="none " enable_mobile="no " parallax_speed="0.3″ video_mp4= " " " video_webm= " " video_ogv= " " video_url= " " video_aspect_ratio= "16:9″ video_loop="yes " video_mute="yes " video_preview_image= " " border_size= " " border_color= " " border_style="solid " margin_top= " " margin_bottom= " " padding_top= " " padding_right= " padding_bottom= " " padding_left= " "][fusion_builder_row][fusion_builder_column type="1_1″ layout="1_1″ spacing= " " center_content="no " hover_type="none " link= " " min_height= " " hide_on_mobile="small-visibility,medium-visibility,large-visibility " class= " " id= " " background_color= " " background_image= " " background_position= "left top " background_repeat= "no-repeat " border_size="0″ border_color= " " border_style="solid " border_position="all " padding_top= " " padding_right= " " padding_bottom= " " padding_left= " " dimension_margin= " " animation_type= " " animation_direction="left " animation_speed="0.3″ animation_offset= " " last="no"][fusion_imageframe image_id="1620″ style_type="none" stylecolor= " " hover_type="none" bordersize= " " bordercolor= " " borderradius= " " align="center" lightbox="no" gallery_id= " " lightbox_image= " " alt= " " link= " " linktarget="_self" hide_on_mobile="small-visibility,medium-visibility,large-visibility " class= " " id= " " animation_type= " " animation_direction="left " animation_speed="0.3″ animation_offset=" "]http://depot-de-marque.com/wp-content/uploads/2017/05/GM_mal-deposer-marque.jpg[/fusion_imageframe][fusion_separator style_type="none" hide_on_mobile="small-visibility,medium-visibility,large-visibility " class= " " id= " " sep_color= " " top_margin="50″ bottom_margin= " " border_size= " " icon= " " icon_circle= " " icon_circle_color= " " width= " " alignment="center" /][fusion_code]W2xhc3R1cGRhdGVd[/fusion_code][fusion_separator style_type="none " hide_on_mobile="small-visibility,medium-visibility,large-visibility " class= " " id= " " sep_color= " " top_margin="30″ bottom_margin= " " border_size= " " icon= " " icon_circle= " " icon_circle_color= " " width= " " alignment="center" /][fusion_text]
What are the risks of registering a trademark incorrectly?
What is a badly registered trademark?
It is a trademark for which the owner has made at least one of the following errors (cumulative, and unfortunately often cumulative by applicants):
The mark is not distinctive
This means that the name chosen by the holder is not sufficiently arbitrary and does not differentiate him from his competitors. Indeed, a legally strong trademark is a trademark that has no direct link with the product or service offered. For example, one cannot register the mark "chair" or "chair" for a range of chairs or other types of seating.
However, the trade mark must not describe an essential characteristic of the product or service offered to its customers. For example, "eco" or "chic" are not registrable trademarks for most products and services, because they describe one of their characteristics, namely that they are cheap or, on the contrary, high-end.
This kind of mark is called a "descriptive mark". Not only are they in principle not protectable in the sense of trademark law, but if they are registered by way of exception, they are mostly indefensible: as the term used must remain available to all players in the sector, it is not possible to claim a monopoly on them. It is therefore by extension not possible to prevent a competitor from using the same term for its products or services. The trademark therefore loses all its interest, since we recall that the main purpose of a trademark is to grant itself a monopoly on a name in connection with goods and services. For more information on the distinctiveness of the mark.
The brand is not available
This is the case when it has already been registered by a third party, or when a very similar mark already exists, generating a likelihood of confusion for the consumer. The trademark is then very fragile and can be attacked at any time. Indeed, a third party owner of an earlier trademark can act from the moment of your filing if he is aware of it, thanks to the opposition procedure before the INPI or the EUIPO. But he can also act after your trademark has been registered before the courts. In practice, the action is almost imprescriptible, since the prior owner has a period of 5 years to act, starting from the day on which he becomes aware of the existence of your trademark. However, it is up to you to prove that he was aware of it, and this proof is very difficult to provide. In general, there must be an exchange of letters between you concerning the mark, following which the opponent has not filed an action for 5 years.
The wording is poorly drafted
The wording is the list of goods and services covered by the mark. It determines the scope of protection of the trademark. If it is poorly drafted and/or the classes are poorly chosen, it can put the owner at significant risk, or the protection of the trademark may be completely lost. It is not uncommon to see owners of trademarks that are in fact not protected at all, even though they have registered it with the INPI.
What are the risks?
For a non-distinctive mark
The main risk is that the trademark application will be rejected. Since offices do not usually refund application fees once they have been paid, you will lose this amount.
However, if the trademark is registered, the protection will be so minimal that you will not be able to enforce it against anyone. Your trademark will therefore be a smokescreen, legally unusable and therefore invalid.
For a brand not available
The financial consequences of an action by a third party can be disastrous: destruction of products, communication media, loss of investments made on the brand, damages to the owner, legal costs... Not to mention the potential loss of credibility with customers. It is therefore necessary to carry out prior art searches prior to filing in order to ensure freedom of use of the trademark and to avoid this type of setback.
For poorly drafted wording
Two scenarios:
- The most serious thing is that the wording does not address your business at all. In this case, the trademark does not give you any protection, it serves no purpose whatsoever. You will probably not be able to develop it in the future, and trying to sell it to a buyer will be a lost cause. You won't be able to defend it or prevent someone from using it in your business. This case is much more common than it seems, because applicants choose to copy wording pre-drafted by the INPI, which often does not correspond to their activity, without knowing that it is possible to draft the wording themselves, nor having the drafting techniques to do so.
- Less serious, but potentially embarrassing: your trademark is aimed at very broad wordings, often proposed by the INPI, which conflict with earlier trademarks even though you are not interested in the disputed goods and services. Example: a restaurant owner registers her trademark broadly for food products and restaurant services. In reality, she plans to use her trademark only for restaurant services, and does not intend to sell food products (drinks, biscuits, cakes...) bearing her trademark. It is being attacked by a major food manufacturer specialising in the manufacture of biscuits. He too has a trademark with a broad wording, which also targets catering services. He requests the total withdrawal of the mark. By digging through the registers, we realise that this industrialist never attacks trademark registrations which only contain catering services. On the other hand, it systematically attacks registrations that contain cookies. Conclusion: if the restaurateur had not tried to protect her trademark for food products, and had confined herself to her core business, then she could have kept her trademark. Today, she had to change her name. This is a common situation, and unnecessarily attracts the attention of prior rights holders, who would not have acted if the wording had been more targeted.
The drafting of the wording is probably the most strategic element of a trademark application. It should not be left to chance, and it is always preferable to to apply to an Industrial Property Attorney to write it.
[/fusion_text][fusion_separator style_type= "none " hide_on_mobile= "small-visibility,medium-visibility,large-visibility " class= " " id= " " sep_color= " " top_margin= "50″ bottom_margin= " " border_size= " " " icon= " " icon_circle= " " icon_circle_color= " " width= " " " alignment= "center" /] [fusion_button link= "/brand guide " title= " " target= "_self " alignment= "center" modal= " " hide_on_mobile= "small-visibility,medium-visibility,broad-visibility " class= " " id= " " " color= "default" button_gradient_top_color= " " button_gradient_bottom_color= " " button_gradient_top_color_hover= " " " button_gradient_bottom_color_hover= " " accent_hover_color= " " accent_hover_color= " " accent_hover_color= " " type= " " " bevel_color= " " border_width= " " size= " " " stretch= "default " shape= " " " icon= " " icon_position= "left " icon_divider= "no " animation_type= " " animation_direction= "left " animation_speed= "0.3″ animation_offset= " "]Back to the guide menu [/fusion_button][/fusion_builder_column][/fusion_builder_row][/fusion_builder_container]