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<\/strong>. It is therefore essential to think carefully about the content and to write the wording yourself.<\/p>\n Depending on whether you plan to sell clothing, or (for example) offer innovative services to connect neighbours to provide toilet paper in an emergency, your needs in terms of brand wording are different.<\/em><\/p>\n Indeed, as we explained in an previous post<\/a>, the Nice Classification evolves slowly and cannot keep up with the advancement of technology as fast as we would like<\/strong>. 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.<\/p>\n Nevertheless, the INPI tends to encourage applicants to use the class titles it proposes, which are rarely suited <\/strong>to their particular situation, especially if they are innovative.<\/p>\n The INPI's filing platform offers several options for making its wording. Most often, applicants use the \"classification overview\" category which includes, as its name indicates, an overview of the different classes. The applicant will then select all the products \/ services offered by INPI for the corresponding class.<\/p>\n But this can cause problems because you end up with inappropriate labels. To take the previous example:<\/p>\n Clothing; footwear; headgear; shirts; leather clothing; belts (clothing); furs (clothing); gloves (clothing); scarves; ties; hosiery; socks; slippers; beach shoes; ski boots; sports shoes; underwear.\u00a0<\/em><\/span><\/p>\n 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.<\/em><\/p>\n 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:\u00a0<\/em><\/p>\n 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).\u00a0<\/em><\/span><\/p>\n 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 trademark, they will not, or very poorly, be protected.<\/em><\/p>\n Unfortunately, such marks are abundant in the registers, and are even more common in the majority<\/strong> !<\/p>\n 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<\/strong> (with the fees that go with it). That is, if they realize their mistake early enough!<\/p>\n Indeed, the risk is to understand the extent of the inefficiency of their brand the day they try to defend it against a third party who uses the same, and thatthey can't attack it.<\/strong> because they do not use their trademark for the goods or services appearing in the wording... (see our duty of care statement<\/a>).<\/p>\n The other problem in using the pre-written INPI labels, and not the least, is thatincrease risk<\/strong> that your application is attacked: in the wording of your trademark, you are targeting a whole range of goods\/services for which you will never exploit your trademark.<\/p>\n On the other hand, there may be owners of earlier trademarks who are interested in those goods\/services and view your registration negatively. In such cases, you are entitled to a formal notice, a procedure for at least partial cancellation of your trademark, or even an opposition.<\/p>\nStandard wording: a broad and inappropriate wording<\/h3>\n
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The dangers of pre-written wording<\/h2>\n