Registering a trademark: which strategy to adopt?
Choosing a trademark is a delicate operation. The genesis of it (otherwise, a creative creation = tautology) emanates in general from a creative approach. But it must also follow a strict legal process. The often expensive investments that you are going to make in marketing and advertising costs must not be ruined by a refusal from the Filing offices, or by the existence of a prior trademark that you would risk infringing on.
Registering a trademark must therefore be part of a carefully developed approach (or built), according to the choices and the positioning perspectives for your products or services in the French, European and international markets.
Your trademark must be sufficiently distinctive, and not consist of a required, usual or generic designation of a product or of a service, or consist in a form that is imposed by nature or the function of the product. In order to strengthen the distinctive nature of a trademark, it can be useful to associate it with a logo or to use an original typology. On the contrary, adding a logo can weaken a trademark that is intrinsically distinctive. Our legal expertise will allow you to register one or several trademarks, offering you optimum protection.
Your trademark also must not have a deceptive nature able to mislead the public, in particular concerning the nature, quality or geographical origin of a product or service are also illicit. In the wine-making sector for example, the trademark must comply with complex regulations that our experts can analyze for you, so that your sign cannot be refused or challenged by public organizations.
It will furthermore be necessary to check that your trademark is indeed available. If there is a risk of infringement, we will determine to what extent it is suitable to change the trademark or to do away with the threat through a purchase, license agreement or a coexistence agreement, or even through action claiming nullity or invalidation of the disputed trademark.
Finally, extreme vigilance is required with regards to the designated products and services when registering the trademark. Indeed, the protection only covers the classes of products and services mentioned at the time of registration. If you use your product or service subsequently in a class that is not covered by the registration, you will not be protected. Our advice will allow you to adapt the choice of classes to your development projects, in the short and medium terms.