How to keep the memory of your trademark?

Written by Claire Leonelli and Claire Denoual - Avocats à la Cour

Published on 12.06.2018 - Paperjam

© Matt Blaze - License CC BY-NC-ND 2.0

May 25 is already behind us, the GDPR has entered into force and there has been no apocalypse (yet?). No doubt that the subject will mobilize important resources. Nevertheless, the spring air makes us want to change, to change the subject in this case and to deal with a theme that concerns every entrepreneur: the trademark and more precisely its obligation of use.

Basically, everyone knows what a brand is, more or less. Whether we like it or not, brands are part of our consumer society to such an extent that we are able to recognize many of them from their logo alone and that some of them are part of our everyday vocabulary ("Shall we Skype?", "Would you have it in Word?", "Have you seen my Stan Smith?").

Trademarks help us to choose our products by offering us the assurance of their origin, or alternatively to turn away from them when we have had a bad experience. Some even go so far as to insinuate themselves into our intimacy to the point of becoming a marker of our personality, and not only for teenagers or "fashionistas" (Mac vs. PC, Porsche vs. Jaguar, TomTom vs. Garmin...).

From the company's point of view, a trademark is above all a means of distinguishing itself from its competitors, of rallying consumers and incidentally a communication tool.

From a legal point of view, in order to obtain increased protection through infringement proceedings, a trademark must be registered before the competent intellectual property offices (BOIP, EUIPO, INPI, etc.).

It then becomes a tangible intangible asset that can be valued on the balance sheet and sold (ideally with a capital gain). Hence the interest in registering the name of one's products/services or the name of one's company as a trademark.

(Relatively) easy to register, the trademark offers its owner a virtually eternal, albeit territorial, protection, provided that the renewal fees are duly paid every 10 years. The trademark owner then has the right to oppose any reproduction or imitation of his trademark by third parties to designate identical or similar products or services.

However, the trademark must be used, at least after a period of five years following its registration. In the absence of serious use during an uninterrupted period of five years, a trademark may, at the request of a third party, be subject to revocation for the goods or services for which it is not used.

The monopoly attached to the mark then falls and the mark can no longer be used in support of an infringement action. This does not mean that the owner can no longer continue to use the mark in the course of his business, but he can no longer prevent third parties from using it on this basis.

When you put it that way, the rule is far from being a challenge: why exploit a trademark if you don't want to use it? If the trademark is not exploited, what is the point of keeping it?

In practice, things are much less simple because, in the event of an action for revocation for lack of use, it is up to the owner to prove, within an often short period of time, that he has made serious use of his trademark as registered, in the territories concerned, during the last five years, and that this use has been made in a public manner as a trademark to designate the goods or services referred to at the time of filing.

Such an exercise can be extremely difficult if certain precautions have not been taken from the start. To illustrate this point, here is a real-life anecdote: a famous watch brand had, among other things, registered a stylized version of the initial of its trademark. An adversary accused it of never having used it. The case seemed to be going badly, while the watchmaker remained unable to provide any evidence. A member of our team saw that the winding mechanism of his own watch had the contested logo engraved on it. However, this element alone was insufficient as it was neither dated nor located. Fortunately, it opened the door to long and difficult investigations that could have been avoided if a systematic and organized archiving of the evidence of use of the trademark had been put in place.

What to do then in practice?

• Photograph a copy of each product model, labels and packaging reproducing the trademark

• Reproduce the trademark as registered on its commercial and communication documents, date them and ideally specify the targeted territories (general conditions, order forms, invoices, newsletters, etc.)

• Indicate the brand name and a description of the product or service in its invoices

• Take pictures of your booth when participating in trade shows and post them on social networks

• Keep a copy of all advertising campaigns and proof of their publication (purchase orders, invoices, etc.)

• To have punctual bailiff's reports of its Internet site or other online uses

• Deposit undated elements once a year with a bailiff or with the BOIP (i-deposit)

• Put these items (or significant copies) together in a file and classify them by year and by territory

The image above is under license CC BY-NC-ND 2.0