As you know, I am an intellectual property lawyer.
However, trademarks are part of intellectual property (just like for example, copyrights, patents, designs, and models).
trademark watch service cost, consultations, and related litigation are therefore part of my daily practice.
Recently, I have noticed that the greatest confusion reigned in the matter and it, therefore, seems to me today opportune to proceed to a summary about the marks, their functions, their usefulness…
What is a brand?
- A trademark is a distinctive sign. It is used to distinguish the products and services of one company from those of another.
A trademark does not therefore necessarily protect a creation (unlike copyright, which protects literary and artistic works; and patent law, which protects inventions).
Indeed, the mark may very well relate to an existing term, egg. The “Orange” brand for telecommunication products and services (formerly Movistar) or egg. The “Mont Blanc” brand for luxury products (the famous Mont Blanc pens).
The term “Orange” was not created by the eponymous brand (it is a color in the dictionary or the name of fruit).
Likewise, the term “Mont Blanc” was not invented by the eponymous brand (the culmination of the chain of the Alps was already named thus before the luxury brand…).
But, conversely, a brand can very well be the result of the creation or linked to creation. Let us think of the various “Tinting” brands registered by the Moulin art company. The term “Tinting” is the result of the creation of Herger. It is therefore not a (pre) existing term (egg in the dictionary) but a creation…
The mark, therefore, protects distinctive signs, which are not necessarily the result of creation but which can be.
The different types of brands
- A trademark protects a distinctive sign which may take one of the following forms:
- a) A word or a combination of words (this is referred to as a wordmark);
- b) An image, a drawing, a logo, (this is referred to as a figurative mark);
- c) A mixture of the word (s) and image (s), design (s), logo (s), stylization, etc. (this is referred to as a semi-figurative mark);
- d) A color, egg. the Pantone 137 C color over which Verve Aliquot has trademark rights; cf. on this subject, Benelux registration n ° 0746608 and the judgment of the Brussels Court of Appeal of June 24, 2004 (we speak of a color mark );
The following trademarks (which are examples given by EUIPO, the European Trademark Office) show that colors or combinations of colors can be protected by trademark law:
- e) A shape (this is referred to as a shape mark or a three-dimensional mark), such as for example the following mark covering a Coca Cola bottle shape:
The “Rubik’s cube”, discussed here, was also registered as a shape mark or three-dimensional mark before the Court of Justice finally invalidated this shape mark in a judgment of November 10, 2016:
Shape marks can also contain word elements, such as the famous triangular mark “Tobler one”:
- Alongside these classic or traditional marks, there are many developments allowing the filing of more original marks as to their subject matter, egg. Of sound marks, the position marks, the hologram marks, the media brands, etc.
Article 3 of Implementing Regulation (EU) 2018/626 on the European Union trade mark (EUTMIR) refers to these somewhat more specific marks.
- On the other hand, smells and tastes cannot, in the current state of the law, not be registered as trademarks – as previously explained in point 5 of my post entitled“ Exclusion of tastes and flavors from law author: my first thoughts ”.
You have to be careful when registering your mark and be careful about what you want to cover by your mark (the object of the mark).
5. I remember, for example, this client who, when selling his business, said to me: “I registered the name of my activity as a brand and I, therefore, want to promote this aspect as well”. However, after having checked the register, I realized that he had deposited an only figurative sign (a pure logo) without the name!
He, therefore, did not have a wordmark or a semi-figurative mark covering the name of his activity; but simply of an exclusively figurative mark covering a pure logo. It is obviously not the same thing especially if one wishes to promote the name…
Filing (and therefore protecting) a name requires the filing of a wordmark or at the very least of a semi-figurative mark (logo + name), and not the filing of a pure figurative mark (without the name or included in the figurative aspect).
Mistakes are very common and you must therefore be vigilant.
It is a bit like if you register a color mark (covering only the color), it is then the color and only the color that is protected as a mark, and not a name.
Conversely, filing a name on a colored background is not filing a color mark, it is filing a semi-figurative mark (a stylized name).
So be careful what you want to protect (what you want to be considered a brand):
- pure name;
- name with stylization / design / logo;
- stylization / design / pure logo;
- color as such;
- form;
- etc.
A mark is “relative”: it is only valid for the goods and services for which it has been registered (principle of specialty)
- Contrary to popular belief, a trademark is only valid for the goods and services for which it has been registered.
This is the reason why when you register a trademark, you have to choose classes of goods and services.
Apart from these classes of products and services, you will therefore have no monopoly or exclusivity, subject to one nuance (similar products and services) and one exception (famous brands); nuance and exception discussed below.
This also explains why several identical brands can co-exist in the same territory for different products and services.
But therefore contrary to popular belief: it is not because you have registered a mark that you will be able to oppose any use of this mark (or of a similar mark) by a third party; you can oppose only if such use involves products and services covered by your brand, or at least to products and services similar (see the section below).
- Nuance: even if you have registered a mark for such and such products and services, you may nevertheless (attempt to) oppose the use of this mark (or of a similar mark) for products and services which are not strictly identical, provided that those goods and services are similar and that there is a likelihood of confusion in the mind of the relevant public. In these cases, the debate will also crystallize on the similarity (or not) of the goods and services and on the existence (or not) of a likelihood of confusion.
- Exception: if your mark is “renowned”, it is possible, under certain conditions, to oppose identical or similar marks even if they are used for goods and services which are neither identical nor similar to the goods and services for which you have registered your trademark.
The leading brands, therefore, allow, under certain conditions, to object to the use of these, even for products and services different. But the fame of these brands must be proven!
A brand is territorial (principle of territoriality)
- Trademarks are territorial intellectual property rights.
This is the reason why the same mark designating identical services can belong to different operators in different territories; without this posing a legal problem (this will probably pose a “commercial” or “strategic” problem for each of these operators, if they are not linked … because their territorial expansion risks being hampered, not to say prevented).
- The territorial co-existence of brands poses many problems via the Internet because on the Internet it is difficult to define “borders”.
If you have a brand only in the Benelux, but your website is accessible throughout Europe – and worse! - Which you sell throughout Europe; while another operator has registered the same mark in another European country (where you, therefore, do not have a mark) … a problem will quickly arise.
- It is, therefore, necessary to think carefully when filing a trademark on the following questions: what is the nature of the activities and what is their territorial scope (are we going to limit ourselves to a country? to a region? to Europe? etc.).
- Conversely, this does not mean either that it is necessary to automatically cover the whole of Europe or even the whole world.
This can be costly in terms of registration fees.
In addition, after a certain period of time, you will need to be able to prove that you are actually – seriously – using your mark wherever you have registered it. In other words, if you deposit for the whole world, but only use in Belgium, it may after a while be a problem anyway.
But this means that when you register a brand, it is useful to think concretely about the strategy, its market, its territorial base, etc. (just as it is necessary to think about the products and services for which you want to register your trademark – see the previous point about the relativity and specialty of trademarks).
- To show that this question of territoriality is not at all theoretical, I am still thinking of this case where one of my adversaries opposed, in court, a French brand against one of my clients active in Belgium.
A French trademark having no effect in Belgium, his request was rejected by the judge…
But this example has the merit of showing that attempts or confusion are great in this area; and it also shows that if this opponent had had a valid mark in Belgium (Benelux mark or European mark), the solution for him could perhaps have been different. However, if this opponent wanted to cover Belgium and be active in Belgium (in short: to oppose the use of a similar mark in Belgium), he would have had to file a mark valid in Belgium…
To be continued…
In Part 2, which I will publish shortly, we will examine the issue of the distinctiveness of a mark (a mark to be valid must have distinctive power and the relevant public must be able to perceive the registered sign as a mark) and on the problems that await descriptive or generic brands. We will also discuss the advantages of copyright over trademarks and vice versa (especially when it comes to expressions, titles, slogans, etc.). And lots of other things!
