How to secure the use of your logo?
The logo often plays an important role in the creation and development of a brand. It gives the brand a visual identity and makes it immediately recognizable. The logo can be protected when it is filed with the INPI, as a figurative trademark (logo alone) or semi-figurative (combining logo and verbal elements). However, you should be careful when adopting and using your logo, which may already be covered by prior rights.
Make sure the logo is available
Who is the copyright owner?
If you don't have create the logo yourselfIf you are not sure you own the rights to your logo, you must check that you are the owner of the rights to your logo. Indeed, the logo, if it is original, is protected by copyright (art. L.112-2-8° CPI). No registration procedure is necessary to benefit from this protection. The rights therefore belong to the person who created the logo, most often a graphic designer.
To ensure a peaceful exploitation, the simplest way is to have the rights to the logo transferred to you. Warning: the assignment contract must be very precise. Only the uses provided for in the contract will be covered. Anything that is not named is not assigned (art. L.131-3 CPI).
Is the logo new?
If the logo incorporates pre-existing elements, it is important to ensure that these are available. The use of certain symbols may indeed be subject to specific conditions (flags, coats of arms, Marianne). Similarly, it is possible that certain elements incorporated in the logo are themselves covered by prior rights (copyright, trademark rights, etc.).
It is therefore recommended to make a prior art search among earlier trademarksto at least rule out that risk. In the case of prior copyrights, it is almost impossible to be aware of them. It is therefore recommended to obtain a contractual guarantee from the creator of the logo. This guarantee must specify that all the elements of the logo are original and have not been reproduced. This clause can be included in the rights assignment contract.
Protecting and exploiting the logo
Once you have obtained the assignment of the rights to your logo, it is important to ensure its protection. The simplest way to do this is by registering a trademark (please note that this registration must be provided for in the rights assignment contract!).
Registering a figurative or semi-figurative mark
Even if the logo is original and benefits from copyright protection, it is advisable to register a trademark, which is an easier title to oppose to third parties and to invoke before a judge. Furthermore, the trademark will make it possible to protect even a non-original logo.
The trademark application procedure is carried out at the INPI for a French trademark or at the European Office (EUIPO) for a European trademark.
Once your trademark is registered, you will be able to act much more easily against reproduction and imitations of the logo. You will also be able to file oppositions against related applications.
Tips for a good use of the logo
To benefit from trademark protection, you must use your logo as registered. Significant changes to your logo may result in loss of protection. If your logo is intended to be used by several people (in the context of a franchise, for example), it is recommended that you establish rules of use to avoid inappropriate use.
It is also fundamental to actively defend your logo. By tolerating the use of your logo (or a sign very close to it) by a third party, you risk weakening your rights to the trademark. If you identify a disturbing use, first send a letter of formal notice to the third party and, if necessary, start opposition proceedings.
The 3 essential points on the protection and exploitation of a logo :
- If you have ordered the logo from a graphic designer: draw up an assignment of rights contract. This contract must provide for ALL the uses that will be made of the logo.
- To benefit from the protection of trademark rights, the logo must be registered with the INPI. A prior art search will ensure that the rights are available. In addition, the registration must correspond to the use that will be made of the logo.
- Once the trademark is registered, the logo must be monitored and defended (formal notice, opposition, infringement action).
Our team can advise and assist you in each of these steps. Do not hesitate to contact us.