9# TRADEMARK REGISTRATION PROCEDURES IN FRANCE

We’ll do a little sidebar here about the steps – click here to return to article 10# THE BRAND NAME – VERSION 2.0 (OUR LAST WORD).

For the registration of the trademark, the lNPI advises to choose a distinctive sign in relation to the activity on the substance and on the form with a logo, a slogan, a sign as it will be exploited.

When you register, the objective is to optimize the scope of the trademark by associating it with classes of activities.

There are currently 45 classes to determine the goods and services that the trademark represents. To facilitate the process there is even an online tool: TMclass. It allows you to search and classify the goods and services for which you wish to apply for trademark protection.

Then, with these classifications, it is necessary to check the availability of the trademark. The objective is to minimize the risk of refusal of registration and at the same time to avoid unnecessary costs.

But by the way, how much does it cost?

The cost of filing a trademark depends mainly on the number of classes selected. The electronic filing with one class included costs 190€. Then each additional class selected costs 40€. So it goes up quickly. Payment is made on the day of filing.

In the event that the application is denied, the amount spent is lost. That’s good to know…

In fact, it is up to the person responsible for the deposit to verify the availability and viability of the application beforehand.

The INPI offers customized research services. They are not free of charge and correspond to spelling, phonetic or intellectual similarity searches. If you don’t have the budget for this step, you can take care of the steps alone. It’s up to you. At Marine Coton, we have managed everything by ourselves.

Good advice from the INPI :

• Avoid identical and similar trademarks – for example: « All right » VS « All write » to register class 16: manuals.
• Check the classifications of goods and/or services that seem identical and close or even remotely related to the activity – for example: for an intellectual property training company, check class 41 (training) but also class 16 (manuals) and class 45 (intellectual property consulting).

It is therefore possible to register a trademark whose name has already been registered if the classification used is different – for example: « Marine » is the same trademark name registered under different completely opposite classifications. The trademark « Marine » is therefore both a clothing trademark in the first case, registered under class 25 (clothing) and a children’s games trademark in the second case, registered under class 28 (games). The classes thus allow to define the field of activities that represents the trademark. However, be careful not to play with fire by registering trademarks that are very well known, you could be eaten alive…

Check brand availability

To check the availability of the trademark, the INPI recommends two websites:

• The database of trademarks of the INPI
• TMview’s trademark database

It is recommended to check it on the two indicated databases to be sure.

Then, you have to validate the corporate name or name of the company that you want to register in the trade and companies register. You can search for it on the DATA INPI and on Infogreffe. It can be different from the name of the brand or identical, it’s up to you.

If you also want to create a website and have a domain name identical to the brand name, it is possible to check the availability on any hosting site before registering the brand name. We checked on OVH cloud. There is also the AFNIC site which gives advice but which is more focused on the management of domains in France in .fr, .re, .pm, .yt, .wf and .tf.

Filing a trademark, the pitfalls to avoid

To avoid losing the availability of the domain name, it is often advisable to buy the domain name quickly, even before the registration. Indeed, it happens that when the registration is validated, companies buy the available domain names to sell them back to you at a higher price afterwards if you wish to obtain this domain name.

Once the domain name has been reserved and the trademark application has been made on the INPI website, you will receive a first letter which is the notice of publication of a trademark registration application in the BOPI (Bulletin Officiel de la Propriété Intellectuelle) then a few months later comes the registration certificate letter in case the application is validated. In the same way, you will be informed in case of refusal.

That’s it for the steps. To read the rest of the article 10# BRAND NAME – VERSION 2.0 (OUR LAST WORD) it’s here.

Sources

Webinar “Les rendez-vous inpi” – INPI – TMclass – TMview – OVH cloud