Steps to register a trademark
Before filing a trademark
Ensuring the distinctiveness of your trademark
The mark you choose must be distinctive, i.e. it must be arbitrary in relation to the goods and/or services that will be covered by your wording. If your trademark describes your goods or services, or one of its characteristics, then it cannot be registered by the INPI, or by any other foreign office. For example, the trade mark VOYAGE CHIC cannot be registered for travel organisation services, because the term 'travel' is descriptive of the product supplied, and 'chic' is descriptive of one of its characteristics, namely that it is an upscale trip.
Choose the most appropriate sign
Once you have decided on the name, you will have to choose the sign that will be the subject of the filing. Many applicants believe that it is possible to protect several variants of the same trademark in a single filing, notably by including in the same file the verbal version (just the name), one or more versions of the logo, and/or the web address of its website including the name in question. Example of a trademark in a form regularly registered at the INPI :
DADIMINT Dadimint dadimint.com |
This is a big mistake. Indeed, the trademark must always be used as filed. Therefore, if the visual that you submit to the INPI includes several variants, it will be considered as a global semi-figurative mark: you will have to use all these variants together, to validate the use of your mark. This will not happen. Your trademark is therefore in danger of having no value, since you will not use it as filed. After 5 years, it can be cancelled by any interested third party, and will be indefensible.
The proper sign is either:
- A word mark: the name alone, without any graphic elements. This is the best form to adopt, especially if the name is distnictive. This allows you to use your brand in the graphic form of your choice, to change your logo at will, etc...
- A semi-figurative mark: the name associated with graphic elements. To be chosen only if the name you want to register is not very distinctive in your field of activity.
- A figurative brand: a logo, mainly. It allows you to obtain a trademark right on the logo, which is also in principle protected by copyright. It is a trademark to be registered if you have the budget or if your logo cannot be protected by copyright due to a lack of originality.
Example of different shapes of the same trademark (European trademark n°14915672):
| Word mark | Semi-figurative mark | Figurative mark |
|---|---|---|
| B.I. PHOENIX |  |  |
Learn more about it on the different forms of brands.
Ensure brand availability
Before registering your trademark, you must be sure that the same trademark, or a related trademark, has not been registered by a third party before you, in your business sector or a related sector. To do this, you must carry out prior art searches, which are the only way to know the legal environment of your project. There are two types of searches:
- Identical search: this is a first filter that allows you to check that there is not already a prior right identical to your project in your sector of activity.
- The thorough search, or search for similarities: this search is carried out from the moment that no embarrassing anteriority has been found during the identical search. It is generally limited to earlier trademarks and allows you to check among similar trademarks to your project which ones could represent an obstacle. For example, if your project is CANOPI, trademarks such as CASSOPI, KAMOPEE, TAPOPI... can be sufficiently embarrassing to prevent your filing.
Searches among earlier trademarks are not sufficient: they must be supplemented by searches among earlier company names and earlier domain names, which are also rights enforceable against a later trademark.
Selecting the classes of goods and services
The Nice Classification contains 45 classes, including 34 classes of goods and 11 classes of services. These classes are supposed to contain all possible and imaginable goods and services, yours being no exception.
While some classes have simple wording, such as class 25 which only deals with clothing, others are catch-all classes such as class 9 which contains, among other things, DVDs, sunglasses, ammeters and fire extinguishers. Nevertheless, all classes have a particular logic that must be appropriated in order to make the right choice and then to write the wording that really corresponds to one's activity.
Writing a customised wording
In order to obtain the best possible protection for one's trademark, it is necessary to draft a wording "by hand", i.e. one must emancipate oneself as much as possible from the INPI's pre-written proposals while respecting the spirit of each class of goods or services. However, this drafting work is difficult to carry out without experience, as it requires a very good knowledge of the logic followed by each class and of the drafting techniques that make it possible to formulate wordings in a manner acceptable to the INPI.
Using a trademark attorney
During the preparation of the submission, a Industrial Property Attorney (CPI), a professional specialized in trademarks, is particularly competent to guide you on the right choice of trademark, sign to be filed and classes. His great added value mainly concerns prior art searches and the drafting of wording: thanks to his experience in trademark law, he knows perfectly how to analyze the results of a search and to evaluate the risks represented by the earlier trademarks found. He also masters all the techniques necessary to draft a wording that is tailor-made, protective and adapted to your activity. Use an ICC.
During the filing
Selecting the right applicant
Care must be taken in choosing the trademark owner. The following may be owners of a trademark:
- A private individual
- A company
- An individual, in the name of and on behalf of a company in the process of being formed
Knowing that, legally, it is always preferable that the entity that exploits the trademark be the owner, it is best for your company to be the owner of the trademark, except :
- if it is being created, in which case you can deposit it in your name, on behalf of the company being created. In this case, you will have to regularize it with the INPI.
- if you do not have a company (individual without legal status, auto-entrepreneur...).
No choice is final, in the sense that it is always possible to transfer a trademark to a new owner, provided that a contract is drawn up in due form and that it is entered in the INPI register.
Respect the different steps of the procedure
The deposit procedure is fast but it is still necessary to carry it out correctly:
- Inform the right holder with a valid email address and physical address: emails and letters will be sent to you by the INPI.
- Fill in the name of a word mark, or attach a file for a semi-figurative or figurative mark, respecting the INPI requirements in terms of format and weight.
- Choose the classes and ideally write its wording in "free text".
- Whether or not to extend the protection of its brand in French Polynesiafor an additional fee of 60 euros.
- Generate and proofread the deposit form to make sure that you have not forgotten anything or that there is no mistake, because it is not possible to make changes afterwards.
- Pay the taxes by credit card.
- Electronically sign the filing.
After the deposit
Responding to any objections or oppositions
The INPI may be led to object to the registration of the trademark by means of notifications of material errors. These are generally problems of wording, which need clarification. It is possible to respond to them in order to rectify the situation and resume the procedure.
Third parties can also file an objection to your application. After analyzing the chances of success, it may be appropriate to respond to them in order to obtain registration of your trademark, in whole or in part. For this type of litigation, we strongly recommend that you to have recourse to an Industrial Property Attorney to help you.
Watching your brand
Many people think that once a trademark is registered, it is protected and does not need to be looked after until it is renewed in 10 years. However, throughout its lifetime, the monopoly it represents must be defended. Indeed, many trademarks subsequent to yours may be registered by third parties in your field of activity and infringe on your rights. Surveillance allows you to be aware of these registrations, and to prevent the registration of those that are likely to create a risk of confusion for the public, and to divert your customers towards a competitor.