It is important to remember that trademark registration is not mandatory to launch an activity, but strongly recommended in order to avoid possible usurpations by third parties.
A trademark is a sign that allows you to identify yourself to customers and build loyalty to your products or services.
According to the definition given by the Institut national de la propriété industrielle (INPI), a trademark is: “a ‘sign’ used to distinguish precisely the products or services of one company from those of its competitors. The sign may be a word, a name, a slogan, a logo, a drawing, etc. or a combination of these different elements”.
Therefore, it is necessary to register the exact sign as it will be exploited.
Where can a trademark be registered?
A French trademark can be registered with the INPI, and a community trademark can be registered with the EUIPO. A single European registration is valid for all European Union countries. The community trademark is a unitary title whose cancellation effects are valid in all member states, unlike an international trademark which often consists of a set of national trademarks forming a block whose effects differ from one country to another.
For an international trademark registration, you must designate the countries in which the trademark will be protected and proceed with their registration in said designated countries.
How much does a trademark registration cost?
In France, the registration cost amounts to 250 Euros for paper filing or 210 Euros for electronic filing. This price includes a registration of the trademark in 1 to 3 product classes. It costs 42 Euros for each additional product or service class.
Within the European framework, the cost of a community registration amounts to 850 Euros for a registration in 1 product class, plus 50 Euros for a 2nd product class and 150 Euros from the 3rd product class onwards.
Anyone wishing to register a trademark can carry out the procedures themselves. Nevertheless, it is sometimes appropriate and useful to be accompanied by a professional who will ensure the validity of the trademark with regard to the law and the wording of chosen products and services.
It is necessary to research all classes offered by the INPI thoroughly before registration and to clearly define the products for which you plan exploitation.
How long is a trademark protected?
A trademark can be protected indefinitely, if and only if the registration is renewed every 10 years. The renewal must take place in the six months preceding the last day of the anniversary month of the registration. After this period, the trademark in principle falls into the public domain.
Note however, that subject to paying a late fee of 125 Euros, you will have the possibility of having an additional six-month period to proceed with the renewal.
Required conditions for proceeding with registration
To be able to register a trademark, you must ensure that the name chosen for the trademark is valid.
What should be understood by “valid”?
The chosen name must be available and not have already been registered as a trademark by a third party for the same products or services. Also, to avoid any opposition procedure, it is recommended to carry out a prior art search. You can do these searches yourself or call upon a professional.
The trademark must also be distinctive and serve to identify a specific commercial origin. The trademark must not describe the target product, nor one of its characteristics, but distinguish itself from what it covers (Example: you cannot register “bread” to designate bread).
Finally, the trademark must not create a doubt in the mind of the public about the nature, quality, or origin of the product.
What happens once the trademark is registered?
Once the trademark is registered, you must exploit it. If you do not do so for 5 years, you risk losing your rights to the trademark.
How to exploit the trademark?
You can exploit the trademark yourself or have it exploited by a third party via an exclusive or non-exclusive license agreement.
Do not forget to clearly define the scope of the contract and register it with the INPI so that it can be enforceable against third parties.
Finally, we invite you to regularly monitor registrations made by third parties to react quickly, by means of an opposition action, if a trademark resembles yours in every respect.
