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INTELLECTUAL PROPERTY

Marques

An idea or a concept cannot be protected as such.

Only the material embodiment of your idea or your concept can be protected.
You must not disclose your concept before examining the possibility of having it protected by one of the following titles of intellectual property:

    • The name of your concept can be protected as a mark. A mark is a distinctive sign enabling you to identify your goods or services resulting from the materialisation of your idea. For further information on marks, consult : Marks
    • Aesthetic creations resulting from your concept can be the subject of the filing of a design. A design can protect the appearance of a product or a visible part of a product, characterized by its lines, contours, colours, shape, texture or materials. For more on designs, consult: Designs
    • If the concept provides a particular technical solution to a technical problem, a device, a system, method, process or software will generally have been created when developing your concept and a patent application can then be envisaged. For more on patents, consult: Patents
    • In addition, original creations, such as information related to the concept, databases or software can be the subject of protection by copyright. For more on copyright, consult: Copyright.

It is also possible to obtain proof of creation by filing a sealed envelope called: Enveloppe Soleau. Caution: this envelope does not impart a property title but only proof of prior possession (proof that you designed or conceptualised the invention at a given date, without obtaining protection against copies). For further information, consult: The Enveloppe Soleau solution.

To avoid having to disclose whilst allowing collaborative assistance throughout the development of the concept:

It is possible to enter into a “confidentiality agreement” or a “preliminary secrecy agreement” with various partners (industrialists, scientists, financiers, sales technicians) who will collaborate in carrying through your project.
With this type of agreement, information can be exchanged with another person who is under an obligation of non-disclosure.
Should the other person make own use of the information transmitted, the agreement would incur his liability for failure to heed his obligations and the dispute can be submitted to the courts.

We are able to provide various services for such agreements or contracts.

You can find standard contracts in specialised legal books on sale in bookshops. The documentation centre at the intellectual property office provides the public with documentary resources containing legal works, specialised periodicals and encyclopaedias. These resources can be freely consulted at the French patent office library in Paris: Bibliothèque de l’INPI.

Depending on the type of project you have in mind, one or more of these forms of protection should be envisaged.

TRADEMARK

What is a trademark ?
 
A trademark is a sign used to distinguish between the goods and services of one company from those of other companies.

A registered trademark imparts exclusive rights to its holder. The holder is authorised to prevent any third party from making use of an identical or similar sign to the registered Trademark, without the holder’s authorisation, for any goods or services that are identical or similar to those protected by the trademark.

What are goods or services ?

In law, goods designate any item subject to sale. A service designates the performance of activities which meet a human demand.

Is there a difference between a trademark and another industrial property right, such as a patent or design ?

The different industrial property rights are intended to protect the creations of natural or legal persons. Nonetheless, they do not cover the same aspects.
 
A trademark indicates the origin of the goods and services of a company so that they can be differentiated from those of competitors.
 
A design covers the ornamental aspect, in other words the appearance of a product. It cannot protect forms which ensure a function.
 
A patent covers the function, functioning or construction of an invented product or method. To be patentable, a function must be innovative, i.e. it must be novel and display an inventive step, have industrial applicability and must be described in such manner that a professional person is able to reproduce the same.
 
Functions of a trademark
 
A trademark ensures three main functions:
 
    • indicates the origin of goods and services;
    • allows the quality of the goods or service to be associated with the constituent element of the trademark;
    • acts as communication vector, a medium for publicity and advertising.

Through these functions, a trademark may become one of the major assets of a company.

 
Which forms can be assumed by a trademark ?
 
A trademark is a « sign able to be graphically represented used to distinguish the goods or services of a natural or legal person” (Article L 711-1 of the Code of Intellectual Property Rights).
As trademarks the following are particularly accepted: words, figures, a logo, a figurative sign (drawings, labels…), a shade or combination of colours or other distinctive elements able to be graphically represented such as the shape of a product, packaging, a sound …
 
Which conditions must be met for acceptance of a trademark ?
 
The trademark must be valid and available.
 
What is a valid trademark ?
 
A valid trademark is a lawful, distinctive trademark.
 
Signs are the subject of particularly careful examination by the services of the French patent office (Institut National de la Propriété Industrielle – INPI).
 
Having regard to the financial investment involved, it is therefore important to check before filing that the envisaged sign is distinctive and lawful.
 
A trademark is lawful if the sign : is not contrary to public order or morality, is not misleading (or deceptive) and is not excluded by law.
 
The assessment of whether a trademark is or is not contrary to public order or morality is made in relation to the sign and not to the goods or the use thereof.
 
A misleading (or deceptive) sign is a sign carrying indications likely to confuse the public as to the nature, the qualities and the origin of the goods or service.

Finally, some signs cannot be adopted on account of the existence of special interdictions laid down by law (in particular emblems, arms, flags of States or other protected official signs, signs of alcohol and tobacco trademarks…).

A trademark is distinctive if it is arbitrary in relation to the goods and services it designates.

A sign must not amount to the ordinary designation of the goods or service under consideration, i.e. it must be neither necessary nor generic nor usual.
A sign must not designate a characteristic of the goods or service such as type, grade, intended use, value, geographical origin, production time, the nature or qualities of the product or service to which it applies.
 
Examples of refused Trademarks :
 
    • “Tea” to designate tea
    • “Sifted flour” for flour- “Euro” for financial services.
What is an available Trademark ?
 
The INPI Office (Institut National de la Propriété Industrielle) does not verify the availability of a sign i.e. whether the sign does or does not adversely affect an already existing Trademark.
 
Indeed, it is up to the applicant to verify that the trademark being filed is not identical or similar to an already existing Trademark.
 
How to verify the availability of a trademark ?
 
Through a search of priorities to check that the envisaged trademark does not conflict with an already existing trademark.
 
The INPI Office offers different search means (internet, and phonetic and similarity searches) but does not analyse the forwarded results.
 
The analysis of priorities is a particularly difficult issue and requires recourse to the skills of a specialist in intellectual property.
 
Such specialists analyse relevant priorities in the light of their knowledge of case law, the practice followed by the courts and their experience.
 
This analysis will enable you to take your decision with knowledge of any risks which may be taken with respect to existing priorities.
 
What are the risks incurred ?
 
Opposition may be filed against the registering of your trademark and/or legal action may be taken against you.
 
Filing of opposition :
 
As part of the registration procedure of your trademark, a third party who has already filed an identical or similar trademark may file opposition against its registration within a period of 2 months effective from the publication of the application for registration.
 
This procedure takes place before the INPI Office (Institut National de la Propriété Industrielle) and if it is deemed to have good grounds it may lead to refusal of your trademark.
 
Legal action :
 
The holder of the prior trademark may also, if the time limit for opposition has lapsed for example, apply to a court to sue for infringement.
 
If the case goes against you the penalties are heavy:
 
Under criminal law: Penalties of a fine, imprisonment and additional penalties such as the destruction of the infringing goods and publication of the court decision in the press.
 
Under civil law: Order given to remedy the loss suffered through the payment of damages. Additional penalties are also possible such as publication of the court decision
 
Protecting a trademark through filing
 
Why file ?
 
The decisions of consumers are influenced by trademarks. A strong trademark creates an identity, creates a climate of trust, sets you apart from competitors, and improves communication between the seller and the purchaser.
 
A trademark is often the result of considerable investment in time and money for publicity and communication, which is why it is advisable to give it protection.
 
Registration is the most effective means for protecting a trademark and is a way of ensuring that it is used by nobody else. For as long as you do not register your trademark, others may do so and therefore acquire your name to distinguish their own goods and services.
 
If no filing is made, it will be difficult for you to uphold your rights since you will have to provide evidence of continuous and definite use at national level, which will be all the more difficult if your use of the sign dates back a long time..
 
For which goods and services and for which territories ?
 
Having regard to the investment entailed it is advisable, after first verifying the validity and availability of the trademark, to determine for which goods and services and in which countries the trademark is to be protected.
 
For which goods and/or services ? (principle of specificity)
 
A trademark imparts a monopoly upon its holder. However, it would be dangerous to allocate a monopoly to the chosen sign that is too large.
 
A trademark is protected for specific goods and services.
 
One same sign (except in the case of famous trademarks) can therefore in principle be filed as a trademark for different goods or services (e.g. the trade trademark “MONT BLANC” both for pens and cream desserts).
 
Since protection is only afforded for the specified goods or services alone, it is important at the time of filing to make a judicious choice of the goods and services for which you intend to protect your trademark.
 
It will effectively not be possible later to complete the list of goods and services unless new filing procedure is carried out.
 
Goods and services are listed in relation to the envisaged use of your trademark.
 
These goods and services are listed under the International Nice Classification which comprises 34 classes of goods and 11 classes of services.
 
A simplified version can be consulted on the INPI Office website.
 
Where to file ? (principle of territoriality)
 
The filing of a trademark in France makes the trademark unavailable solely on French territory.
 
The trademark must be filed in the country or countries in which you conduct your main activities.
 
Prior to extending your trademark to foreign countries, it is preferable first to file in France and the issue of whether or not to extend the French trademark to other countries can be addressed within a period of 6 months.

Indeed, within a time limit of 6 months effective from the date of your French filing, it is possible to extend the protection of your trademark to other countries whilst having the benefit of the French filing date (priority date).

Any trademark filed by other persons within this time interval will not be enforceable upon you.

 
In France, the acquiring of rights is obtained by filing the trademark followed by registration thereof with the INPI Office (Institut National de la Propriété Industrielle).
Trademark rights remain in effect for a period of 10 years as from the date of filing and can be maintained in force indefinitely through successive renewals.
 
How to extend protection of a trademark to other countries ?
 
To make a choice between these 3 modes of protection, you must take several factors into account, namely and in particular :
 
    • the fact that the system for protecting trademarks varies from one country to another: single class filing (one trademark per class of claimed goods or service), or multi-class filing, or filing for a limited number of products…
    • the financial aspect,
    • the nationality and size of your company and your field of activity.
 
It is therefore advisable to adopt a protection strategy which a specialist in Intellectual Property is able to determine with you.
 
A foreign national trademark must be filed with each national office.
 

The formalities will be as many as there are countries in which you wish to file.

In most countries, the period of registration is 10 years and protection can be indefinitely renewed.

 
A Community trademark filed with the OHMI Office (Office for Harmonisation of the Internal Trademarket) is a single title for all member countries of the European Union (27 countries since January 1st 2007) governed by uniform legislation.
 
It is not possible to limit the geographical scope of protection of a Community trademark to some member States (this requires national filings).
 
The registration of a Community trademark is valid for ten years and can be indefinitely renewed for further ten-year periods.With each enlargement of the European Union, registrations (or applications for a Community trademark) are automatically extended to the territory of the new member States without giving rise to the need for formalities or the payment of fees.
 
An international trademark
 
It is possible, on the basis of a duly filed or registered national application, to extend the protection to one or more member countries of the Madrid System (86 countries as at 25/04/2012) via a single filing with the World Intellectual Property Organisation (WIPO).
 
The international trademark, unlike the Community trademark, is not a single title but leads to as many national trademarks as designated countries in the application, and the trademark may be the subject of refused protection in some countries.
 
You may subsequently extend the protection of your international trademark to countries other than those initially designated provided that related formalities are carried out and relevant fees are paid.
 
The period of validity of an international registration, since April 1st 1996, is 10 years indefinitely renewable.
 
The Madrid system may appear to be simpler than filing for foreign national trademarks, but attention must nevertheless be given to the individual fees in the countries to which these apply. Prior research may therefore prove to be expedient.
 
The lifetime of a trademark after filing ?
 
Trademark renewal
 
The period of protection of a trademark is tending towards a uniform period of 10 years in most countries.
 
Protection can be indefinitely renewed for ten-year periods subject to payment of renewal fees.
 
Failure to renew will lead to loss of rights to the trademark.
 
Renewal cannot be used as an opportunity to modify the trademark; if you wish to modify the sign or extend the list of goods and services new filing procedure must be carried out.
 
Make use of a trademark to avoid loss of entitlement
 
Forfeiture of a trademark can be decided by a court if it is not used.
 
Indeed, a trademark must be given proper use for an uninterrupted period of 5 years unless you can provide “good grounds” for non-use.
 
The starting point of this 5-year period is the date of publication of the registration of the trademark.
 
If the trademark has already been given use, this time period starts to take effect as from the last date of use.
 
For a Community trademark, proper use can be established if the trademark is used in only part of the Community such as one Member State or part thereof.
 
It is therefore advisable to keep dated evidence of the use of your trademark.
 
Such evidence may be formed for example by:
 
    • brochures, catalogues, leaflets and any dated sales or advertising documents reproducing the trademark to designate one or other of the services designated on registration;
    • print-outs of website pages, dated and making clear reference to the intended public;
    • order forms or estimates reproducing the trademark;
    • invoices reproducing the trademark.
 
Caution : these documents must carry the trademark such as filed and must refer to the goods for which it was registered.
 
Prevent the trademark from becoming a generic term (degeneration)
 
You must prevent your trademark from being used by the public automatically as a generic name to designate the product or service for which it is registered.
 
To provide against this risk, you must display your intention to maintain your rights to the trademark (e.g. warn the public through adequate indication that your trademark is protected and/or take legal action).It is therefore important to adopt a defence strategy for your trademark which an Intellectual Property specialist will be able to determine with you to maintain your rights to your trademark.
 
Monitor a trademark
 
Why monitor my trademark ?
 
It is useful to organise the monitoring of other filing procedures to know whether an application for a strongly similar national, Community or international trademark designating France has been filed.
 
A trademark monitoring service will give you warning within 15 days after the publication date of any contentious trademark.
 
What is the advantage of monitoring ? Filing opposition against registration of a third party trademark
 
    • Opposition must be filed within a determined time limit (2 months for a French trademark and an international trademark designating France, and 3 months for a Community trademark) after publication of the application for registration.
Indeed, the INPI office (Institut National de la Propriété Industrielle) does not automatically examine whether a filed sign violates the rights of other persons. It is therefore for you to defend your rights.
 

This administrative procedure which is conducted with the INPI office has the advantage that you are able to react early and it is less costly than legal action.

If the opposition is found admissible, the third party trademark will be refused.

Opposition procedure before the INPI office is a special procedure which requires the assistance of a specialist in Intellectual Property since it often happens that a request for opposition is dismissed not for lack of reproduction of imitation of the trademark, but because the grounds used for proceedings were ill-chosen or ill-argued from a legal viewpoint.
 
    • Action for infringement can also be instituted in particular if the time limit for opposition has lapsed.
Such action is taken before civil or criminal jurisdictions.
 
Avoid forfeiture through tolerance :
 
If you knowingly allow a third party to use its trademark which breaches your rights without taking any action for a period of 5 years, you will no longer be able to take action for infringement against this trademark unless it has been filed in bad faith.
 
A trademark monitoring service may prove to be indispensable from this standpoint.
 
How to use and take full advantage of a trademark ?
 
How to use a trademark ?
 
An agreement whereby the trademark holder transfers all or part of its rights to the trademark.
Full or partial assignment depending on whether it is granted for all the goods or services protected by the trademark, or only for some thereof.
 
Assignment of the trademark alone, or together with the business goodwill attached thereto.
 
Assignment cannot be territorially limited: it necessarily concerns the entire national territory.
 
Assignment can be made against payment or free of charge.
 
Trademark licensing agreement :
 
    • An agreement whereby the holder of the trademark allows a third party to use all or part of its trademark which nevertheless remains the property of the holder.
    • A full or partial licence depending on whether it is granted for all the goods and services or only for some of these.
    • A licence can have territorial limitation only permitting use of the trademark in one part of the national territory.
    • A licence can be a simple licence when the holder of the trademark reserves the right also to make use of the trademark or to grant licences to third parties, or an exclusive licence, i.e. reserved for the sole licensee.
    • A licence can be granted against payment or free of charge.
 
The preparation and drawing up of a licensing agreement is an operation which may prove to be complex, and recourse to a specialist in Intellectual Property may be desirable to examine the different points for which provision must be made.
 
As part of the registration procedure of your trademark, a third party who has already filed an identical or similar trademark may file opposition against its registration within a period of 2 months effective from the publication of the application for registration.