When should I register my trademark?
Is there a strategic moment to register your trademark? Is there a better time than another to do so? We answer your questions!
Deposit as soon as possible
As we have already said, in France, the first one to file is usually the one who is right. This encourages people to register their trademark as soon as possible, at least before any exploitation begins. Indeed, if you start communicating on a name that sounds pretty to the ears of an indelicate competitor, the latter may decide to register the trademark before you do. In this case, it will be difficult for you to get it back, especially if you have no prior rights to oppose. However, if you have an opposable domain name or company name, you will have to initiate proceedings (opposition or cancellation). There is therefore a significant legal risk (will you succeed in recovering the trademark?). On top of that, there is the time and money spent on proceedings, which can be significant.
In short: as soon as you get the idea, de-po-sez!
The best time to register your trademark
Ideally, a trademark should be registered 4 months before starting to use it. Why should you do that? Because, as we explain in our article on trademark application procedureThere is an opposition period open to third parties to prevent the registration of your trademark. This period expires approximately 3 months after filing. Once this period has elapsed without any problems, it is at least reasonable to assume that the major players in your profession, who in principle actively monitor their trademarks, have not found anything wrong with your trademark and have not wished to oppose it. This is reassuring, as the chances of being subsequently attacked are statistically lower.
Note that you are free to use your trademark before the expiration of this period, but if a third party files an opposition and the INPI agrees, then you may have to change your name, and thus lose the investments (time, finances...) that you have made on the first trademark.
The need to file 3 months before the start of operations can be avoided by proceeding as follows a thorough background check Thanks to it, the legal environment of the trademark being considered for registration is known, and the potential dangers are perfectly clear. If no real obstacles have been identified during the search, one can then file without fear, and start using one's trademark serenely, without having to wait for the opposition period to expire. The in-depth search nevertheless requires specialized analytical skills, which an Industrial Property Attorney puts at your service in order to ensure you a protective and safe trademark.
Strategies around the filing date
Postpone the date of publication of the mark
Such a practice would make it possible to inform third parties of a filing only at a late stage, while retaining protection from the filing date. This type of practice exists in particular in the field of designs.
However, there is unfortunately no way to delay the publication of a trademark. Moreover, the date of publication is always uncertain, depending on the workload of the INPI. If currently (June 2016) the INPI publishes applications very quickly (in about 3 weeks), this delay can be up to 6 weeks.
Accelerate the publication of the trademark
Conversely, some may be tempted to speed up the publication of their trademark in order to move more quickly to the opposition procedure, and thus to the registration of their trademark. However, in France, it is not possible to speed up the publication procedure either.
However, in the European Union, the EUIPO has set up a procedure for European trademarks, known as the "European Trademark Office". of "fast track", which reduces the procedure time from 6 to 4 months. The trademark is published very quickly (in less than a month), because the owner has chosen a wording (list of goods and services) which contains only expressions pre-approved by the EUIPO. The examination of the application is therefore facilitated for the Office, which can more easily speed up the procedure.
Deposit at the last moment
Some companies operating in highly competitive sectors need to protect their brand as soon as possible in case there is a leak to a competitor. But at the same time, they prefer to file as late as possible in order to postpone the date of publication of the trademark as much as possible, so that their competitors only become aware of it at the last moment. It is indeed common for companies in the same market to "inspire" each other, or to thwart the communication on a new opposing product by releasing a similar product at the same time. It is important in these businesses to stay ahead of the competition. From the point of view of trademark registration, the publication date is then calculated and the trademark is filed so that it is published at the same time as the product in question is placed on the market.
However, beware of this kind of tactic, which can backfire if important information is leaked as a result of the carelessness of an employee or supplier/partner.