No to pre-written brand names!

Writing the wording: a fundamental step

The wording is the identity card of your brand

In general, applicants spend a lot of time choosing the name of their trademark, but do not ask themselves the question of its wording. However, the wording is fundamental, since it determines the scope of protection of the mark. It is therefore essential to think carefully about the content and to write the wording yourself. Depending on whether you plan to sell clothing, or (for example) offer innovative neighbor-to-neighbor toilet paper emergency services, your copywriting needs in terms of brand wording are different. Indeed, as we explained in a previous post, the Nice Classification evolves slowly and cannot keep up with the advancement of technology as fast as we would like. On the other hand, it is obvious that it cannot be absolutely exhaustive and include all the activities that all the companies in the world can provide. Nevertheless, the INPI tends to encourage applicants to use the class titles it proposes, which are rarely suited to their particular situation, especially if they are innovative.

Standard wording: a broad and inappropriate wording

The INPI's filing platform offers several options for making its wording. Most often, applicants use the category "classification overview" which includes, as its name indicates, an overview of the different classes. The applicant will then select all the products / services proposed by the INPI for the corresponding class. But this can cause problems because you end up with inappropriate wording. To resume the previous example:

• If you want to sell clothes with your trademark, you are lucky, there is a class just for you: class 25. The INPI will offer you the following overview at the time of filing: 

Clothing; footwear; headgear; shirts; leather clothing; belts (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes; ski boots; sports shoes; underwear. 

Here, everything is fine, although this list could be greatly shortened by just "clothing, shoes, hats". After all, all the other products on the list fall within the scope of one of these terms.

• If you are providing business-to-business services between neighbors for the supply of toilet paper in an emergency, you will not find any INPI class titles that come close to this formulation.

However, if you manage to identify the class to which these services may belong, i.e. class 35, you will end up with the following wording: 

Advertising; management of commercial affairs; business administration; office work; distribution of advertising material (leaflets, brochures, printed matter, samples); newspaper subscription services (for third parties); telecommunication subscription services for third parties; presentation of products on any means of communication for retail sales; advice on organisation and management of business; accounting; reproduction of documents; employment agency services ; wage portage; management of computer files; traffic optimisation for websites; organisation of exhibitions for commercial or advertising purposes; online advertising on a computer network; rental of advertising time on any means of communication; publication of advertising texts; rental of advertising space; broadcasting of advertisements; public relations; company audits (business analyses); commercial intermediation services (concierge services). 

Do you see your innovative services in there? Well, no, I don't. These services do belong in Class 35 because they are commercial in nature, but without writing them "by hand" in the wording of the mark, they will not, or very poorly, be protected. Unfortunately, such marks are abundant in the registers, and are even more common in the majority !

The dangers of pre-written wording

The consequence of a poorly worded application is that applicants end up with trademarks that do not protect them: they think they are saving money by avoiding advice, but in reality, in order to benefit from a real protection, they will have to proceed to a new filing (with the costs that go with it). And that's if they realize their mistake early enough! Indeed, the risk is to understand the extent of the inefficiency of their trademark the day they try to defend it against a third party who uses the same, and thatthey can't attack it. because they do not use their trademark for the goods or services listed in the wording . (see our duty of care statement). The other problem with using INPI's pre-written wording, and not the least, is toincrease risk that your registration is attacked: in fact, you are targeting in the wording of your trademark a whole series of products/services for which you will never use your trademark. On the other hand, there may be owners of earlier trademarks who are interested in these products/services and who take a dim view of your registration. In that case, you are in for a formal notice, a procedure to cancel at least part of your trademark, or even an opposition. In addition to the anxiety-provoking of these procedures, that delay recording of your brand. Our advice if your brand is important to you, and you want it to be fully effective and valuable in the future, seek professional helpThe company has a team of experts with experience and knowledge of trademark practices that will ensure you a real protection. If your activity is innovative and you do not find yourself in the standard wording of the INPI: no problem - we can advise you and write the best wording for you!