A short history of trademarks (2): the 1857 law and the consecration of use
In a 1er part on the history of trademarks, we had told you about the emergence of trademark law. The first trademarks date back to antiquity, when merchants used signs on their products to distinguish themselves from competitors. However, the first legal aspects of trademarks date back to the Middle Ages.
Today, we're going to be looking at the law of 23 June 1857. It is indeed the founding text of trademark law in France. This law remained in force for more than a century, before being repealed by the law of 1964, which affirmed that the registration of a trademark alone could constitute a right.
The law of 1857: the alternative between trademark use or registration
In the 1850s, France was again an imperial power (with Napoleon III's Second Empire). These years were also marked by a very strong expansion of world trade. If inventors are already protected since the patent law of 1844, this is not the case for merchants. With the development of trade, it becomes urgent to legislate on trademarks. The law of 1857 was therefore adopted.
According to this text, a trademark can take several forms: it can be a name, an emblem or any other distinctive sign. The particularity of the text lies in the acquisition of the right to the trademark. The owner of the trademark can be the one who uses it first or the one who registers it first (the "1er arrived, 1er served"). Surprisingly, once the trademark is registered, there is no obligation to use it.
The deposit, which cost 1 Franc in 1858, is valid for fifteen years, renewable indefinitely.
How to file a trademark with the Registrar
To register his trademark, the owner must apply to the registry of the Commercial Court of his domicile. Two identical copies of the design of his trademark on plain paper are required for filing. The clerk's office checks the formal requirements ("the regularity of the filing"). He does not assess the character of the trademark. Thus, if the applicant protects an invention with a trademark application (instead of filing a patent), the application may be accepted, but will have no effect.
Of the 2 copies of the deposit, one shall be deposited at the registry. The other is sent to the Conservatoire des Arts et Métiers, which will make it available to the public.
The usefulness of filing under the law of 1857
The law of 1857 therefore provides that ownership of the trademark is obtained through use. Thus, it is possible to oppose the registration of a registered trademark by proving use prior to filing.
But it should be noted that if the deposit is only "declarative", it has several advantages. Filing allows the trademark owner to bring an action for infringement or unfair competition. It constitutes irrefutable proof of the existence of the right. Once the trademark is registered, third parties cannot use it. Otherwise, they are guilty of infringement or imitation. The courts impose very high penalties on counterfeiters (imprisonment and fines of up to 3,000 francs). Imitators can also be convicted, but the penalties are less severe.
As you have seen, the 1857 law was a first step in trademark law, enshrining both the use of the trademark and the advantages for the applicant. The system was also stable, since it remained in place for more than 100 years.. With the law of 1964, it is the principle of deposit that is enshrined. Only a trademark registration can attribute a property right. However, the legislator allows the owners of trademarks of use to benefit from a 5-year period to file trademark applications.
And in 2019, how can you register your trademark? All the answers in our guide !