Registering a logo: an essential step in any business strategy
Why register your company's logo?
Registering your logo is not a legal obligation but it is strongly advised. You can use your logo in the course of trade without having any trademark rights on it. However, it will be more difficult to protect yourself in case of a dispute with a competitor who could claim authorship of your visual identity.
Register a logo and anchor your visual identity
The visual identity of a company includes all the visual elements that allow customers to identify the company. This visual identity includes the logo. The logo is at the center of the brand image of a company, and from it often derives the graphic charter and the whole visual identity of the company. Thus, rights obtained on the logo establishes its role at the forefront of the communication strategy, as registration formalizes its role within the company.
In any case, the protection of the company logo fosters marketing stability. In the event of a change in the logo, and as long as the changes are not substantial, it is not necessary to make a new application. However, if the logo fundamentally changes, a new registration would be required.
Register a logo and make it an asset
Registering a logo allows you to obtain trademark rights. These trademark rights are an intangible asset that are counted among your company's overall assets. Since you have the possibility to commercialize it, in particular through licenses, it forms a key element of your corporate and commercial strategies. Obtaining trademark rights by registering the logo is also important in cases of mergers or acquisitions since it will increase the overall assets of a company and, a fortiori, the value of a company.
Register a logo and minimize parasitism
Obtaining trademark rights over your logo gives you a monopoly to exploit your logo for a period of 10 years, renewable indefinitely. You are therefore the only one who can exploit this particular logo for specified types of products and services in a specific territory. This implies that you can defend yourself against any individual or company who copies or imitates your logo for these products or services in the specific territory.
Without explicitly plagiarizing your logo, a company may be tempted to design its own with many similarities to yours in order to mislead consumers. The goal is to take advantage of your notoriety and your reputation in order to convert your customers. Generally speaking, parasites operate in the same industry.
Registering your trademark is an effective way to shield your company against these practices by allowing you to act before a court of law.
How to register your logo?
Registering your logo requires to you to identify, beforehand, the scope of your trademark rights by defining the logo, classes and territory. Once you identify those elements, it is strongly recommended to carry out a prior rights search in order to establish the availability of your logo.
Prior rights check
Once you have your logo and prior to its registration, it is imperative that you conduct a prior rights check in order to establish whether your logo is available, i.e. whether a previous mark is reproduced. If you do not carry out this search, the owner of an earlier right may oppose the registration of your logo, and a fortiori, prevent you from obtaining trademark rights, or sue you for infringement. The use of an existing logo without the express authorization of its owner is strictly prohibited. You will have lost time, money and resources, which could have been saved by a prior rights search.
However, if the search identifies potential difficulties, keep in mind that it is always possible to organize the transfer of trademark rights from the owner to you.
This prior rights search can be carried out directly on the website of competent authorites or through a specialized law firm.
Types of marks
A trademark right is composed of a mark that can take many forms. It can be a logo, word, number, sound, shape, color, movement, hologram, video or a combination of the above.
For a trademark to be valid, a mark must be distinctive, meaning that it must allow consumers to distinguish the products and services of one business from those of another.
It must not be descriptive. For example, you cannot have a trademark over the word "moto" if you intend to sell motorcylcles.
The mark must be compliant with public order and morality, hence the rejection at the european level of trademark applications such as ‘screw you’ (R 0495/2005-G) , ‘la Mafia’ (R803/2016-1) or any trademark including the word ‘fuck’ (R 0793/2014-2,R2205/2015-5).
Moreover, the mark must not decieve the consumer, such as the rejection of the trademark 'lactofree' for dairy products in class 05 (R 0892/2009-1).
The monopoly coming from trademark rights implies that you, the owner, are the only one that can use this specific mark for the specific product or services. This means that if you have a trademakr right over the mark "green sunshine" to sell pharmaceutical products, this does not prevent another company from obtaining a trademark right over "green sunshine" for clothes, as these are totally different products and the consumer would not believe that they come from the same entity. This would be different if the products were similar.
Keep in mind that when you select the product and services, you essentially define the scope of your right. These goods and services are grouped by classes and the set of these classes constitutes the "Nice Classification". The classification has 45 classes, classes 1 to 34 cover goods and classes 35 to 45 cover services.
It is therefore up to you to select the goods and/or services for which you want to register your trademark. The trademark right will only cover the goods and services expressly covered in the application, and it is not possible to modify them after filing. In case you want to amend the application, you would have to file for a new trademark, pay a new fee and you will then receive a new filing date.
It is important to cover all of your activities, with foresight, without trying to file for classes that you will never use. For every additional class you include, the price of the deposit increases and the more you expose yourself to challenges from other owners.
The principle of territoriality in trademark law implies that your trademark is protected only in the territory in which it is registered. This means that in the event of a dispute, you will only be able to assert your French right against infringements on French territory and not against the use of an identical trademark in Spain.
The territory depends on the registration office. There are three options:
- File with your national authority to obtain rights valid throughout a national territory;
- File with the EUIPO (European Union Intellectual Property Office) to obtain rights valid throughout the territory of the European Union;
- Extend your trademark rights internationally on the basis of a national or European law via the WIPO (World Intellectual Property Organization).
It is up to the applicant to decide whether they wish to obtain a national, European or international law trademark. This is part of the company brand strategy, a strategy that must take into account the costs associated with the various filings but also those associated with the defense of the trademark.
How to register your logo?
Once you have determined your mark, your classes, your territory and the prior rights check has not revealed any problematic anteriorities, you can proceed with the filing of your logo with the competent authorities. Your logo will then be examined and follow a legally framed procedure in order to determine if a trademark right can be granted. The procedure will vary depending on the Office chosen, but it will generally follow the outline presented below.
Filing your logo
The filing of your logo can usually be done directly online at the site of the competent authorities. When filing, you must proceed with caution as it is not possible to modify certain elements of the application after filling. Once the application is completed, you will receive an acknowledgement of receipt indicating the date and number of your application. The Office will then publish your application in an official journal to inform third parties.
Examination of the application, opposition and observations
The Office will review your application on the substance (e.g. validity of the trademark) and on the form (e.g. payment of fees). In parallel, the publication of your application in the bulletin opens the opposition period (2 to 3 months depending on the office) which allows the owner of an earlier trademark to oppose the registration of your trademark if they consider that the registration infringes their rights. During this period, it is also possible for a third party to submit observations to the Office in order to prevent the registration of the trademark (e.g. if it does not comply with other regulations such as those on geographical indications). You will be notified by mail if observations or oppositions have been filed.
Registration of your trademark
If you have successfully answered to the observations or proved that there is no likelihood of confusion between your trademark application and an earlier trademark, the registration procedure for your application will continue. Once your trademark is registered, the Office publishes the registration in an official journal and you will then receive the certificate of registration of your trademark.
Once registered, what's next?
A trademark is registered for a period of 10 years. However, and this is a peculiarity of trademark rights, at the end of this period, you can renew the trademark right indefinitely. In fine, you can maintain a monopoly for an indefinite period of time, subject to certain conditions.
Owning an intellectual property right is an asset for a company but will only be fully exploited if the company is ready to enter into litigation to defend it. Litigation is a variable that a company must always take into account. Having a trademark right, and a fortiori, an intellectual property right, implies the implementation of a strategy to protect these assets. It is therefore strongly recommended to enlist professionals to monitor your rights and establish a strategy to protect your intangible assets.
The opinions, presentations, figures and estimates set forth on the website, including in this blog, are for informational purposes only and should not be construed as legal advice. For legal advice you should contact a legal professional in your jurisdiction.
The use of any content on this website, including in this blog, for any commercial purposes, including resale, is prohibited, unless permission is first obtained from Vaultinum. Request for permission should state the purpose and the extent of the reproduction. For non-commercial purposes, all material in this publication may be freely quoted or reprinted, but acknowledgement is required, together with a link to this website.