7 tips to protect your trademark
When launching a product or a new company, how can you create value with your brand?
Usually you’ll spend hours brainstorming, finally finding the perfect name, the one that describes what you are doing and what you are selling.
Next step… ensure you don’t need to change it later or allow anyone else to use it, which would jeopardise all your efforts.
So protect it! Register your brand, your logo, colors, design, etc. in your targeted markets!
Ok but what is a trademark?
To be safe, you want to protect your trademark. A trademark is above all a ‘sign’ (any type of sign, such as the Nike logo) as well as a name, a drawing, a fragrance, a sound or anything that can let people recognise your product from another one.
No — the name of your product must be distinctive and innovative at the time of the registration.This is analysed in various ways depending upon the culture or the context. For example, a rabbit made of Lindt chocolate is not protected because a rabbit is a common shape of chocolate when it comes to celebrating Easter; yet maybe in Russia, this analysis will be different based upon different cultural habits.
As for your logo, to increase your level of protection, be creative and avoid using a shape imposed by the nature or function of your product.
Feeling lost? Looking for the golden rule that will save you time?
- Here it is: Invent a new word (not that inventing a word is easy :-). For example, Algolia, Slack, Trusk, Inato…
As the saying goes, if you want something done right, you have to do it yourself!
If you still haven’t found the magic word, let’s look into the rules from some use cases!
“A pessimist sees the difficulty in every opportunity; the optimist sees the opportunity in every difficulty.” Winston Churchill.
What are the legal constraints ?
2) You cannot use blacklisted words/symbols, because they will just bring more trouble than anything else; and troubles = legal costs.
For example, this includes national emblems, flags, illegal product names or similar items.
Interestingly, in France, the rooster is not considered as national emblem as it is not used by the administration, thus the brand “Coq Français” is allowed as a trademark.
However “cannabia” is prohibited since it refers to cannabis, which is illegal in France (and while you may want to challenge this, your chances of success are…little to none :-).
More generally, misleading or deceptive signs cannot be registered. For example, the brand “supermint” has been rejected for products not made from mint or not flavoured with mint.
3) Generic names are not protected as trademarks. As much as we like or dislike Apple, we can’t believe that Apple jeopardises the word for farmers or Camomille impacts all kinds of drinks or herbal teas.
4) If you have a descriptive name for your product, again, you will be protected with your logo (your design, your colors etc.) but the expression itself is not protected… We love Save, but you don’t want to pay a licence fee each time you use this expression when chatting with your friends :).
And if you haven’t found the magic word, or you end up with a generic name, like Orange, Camomille, Apple or TheFamily, or a descriptive expression like SaveMySmartphone? What should you do?
The good news is that you can still protect your brand as a trademark.
You’ll want to check two things: (1) the category of products or services offered, and (2) your design, logo, colors, shapes, etc.
If you use a generic name for completely disconnected products or services (ex. Apple for phones, Camomille to aid the elderly) then it becomes eligible for protection. And if on top of that you add a distinctive logo, then you have trademark protection which definitely prevents competitors from using these words for the same category of products or services. It is not 100% protection but it’s likely close enough.
Note that it’s not because you choose a descriptive or generic name that your logo cannot be protected. In such a case, your logo is protected but just be aware that someone could use the same expression or words.
5) And now that you found your name, or names (pick a few just in case…) check its availability.
You can check the INPI database to see if there is a similar product with a similar name.
For instance, if you have a pen called “Mont Blanc” and a chocolate with the same name, there is no problem because these two trademarks do not refer to the same class of registration.
You can check the availability of company names, patterns, designs, trademarks that phonetically sound like yours… Just use the INPI’s website that registers every trademark.
What to check?
Pick the categories of products and services to which your product refers (‘classes’).
Conveniently, trademarks are sorted according to the type of products they describe.
For example, class n°42 for software, class n°25 for clothing, etc.
You can add as many categories as you want or need. Note that this protection is provided for 10 years but you need to demonstrate that for each category, you effectively exploit your trademark for the product or services you’re selling.
Until recently, when you registered a new trademark, you had to check for similarities with any others. If there were too many similarities, there was a risk of forgery and you had to look for another trademark; if not, then you were safe and protected.
Now, courts are being more strict: if there is even the possibility of a link being created in the mind of your customers between your trademark and a pre-existing one, be cautious: you could be accused of counterfeiting.
For instance, Maison du Monde, a brand of home decoration stores, won a case against Gifi, that had displayed advertisements with a house and the phrase “tout pour la maison”.
6) Finally, choose the geographic area for protection. You can register in a single country, in the EU or in several countries around the world; it’s simply a matter of price.
To avoid any unexpected competitors, don’t wait before filing. And remember that every 10 years, you need to confirm your registration so that your trademark is still protected and to exploit your trademark in all registered categories of services and products.
7) If you think these questions are too complicated or are taking up too much time, you can always ask for advice from experts (lawyers) who can guide you and proceed with the registrations on your behalf.
Co-author Sabine Zylberbogen & Anne-Laure Duthoit