How to create and protect my brand?

Why?
To capture customers, companies should define and communicate their ideas, distinguish themselves from their competitors and create a direct link to their goods or services. The entrepreneur must understand what a trademark is in the legal sense and the procedures for registration.

The characteristics of a trademark
The trademark is an intellectual property right that gives his holder a monopoly, a right of exclusive exploitation. The trademark is a distinctive sign, which establishes the link between a company and the product or the services it offers, and differentiates it from the competing goods or services in an instant. Since it confers a monopoly and must enable an immediate distinction, the trademark has to answer to certain criteria, which are common, but can nevertheless vary from one country to another. Therefore, trademarks have to be distinctive, available, non-deceptive, and should not infringe the laws and regulations (Not to go against local moral values, for example).
The distinctive character emanates from what is not obvious or commonly admitted. Here, the trademark should not only describe the provided services and products but also stand out from the other brands when describing a product or service. For example, the trademark “Orange” cannot be used to protect oranges, as it is also a name of fruit.
The non-deceiving character enables the denial of the registration of a trademark that would deceive customers when it comes to the quality of products and services, or their origin. For example, the trademark Orange Bio could not be allowed to designate oranges that are not a product of biological agriculture for two reasons: its descriptive and deceiving nature.
A brand needs to be available to be registered. It should not harm nor cause confusion with an already existing trademark. This is appreciated according to a number of factors: protected classes, risk of confusion, similarity or reproduction of signs, reputation of an anterior brand.
Finally, to be registered, a trademark has to abide by the laws and regulations (to respect moral values). Therefore, it should not include insults, offensive images, or the representation of a national flag or a national emblem.
Apart from these particular conditions, which can vary from one legislation to another, it is recommended, to protect one’s brand, to apply for registration at the competent bureau.
In the application, it is also recommended to indicate:
– The distinctive sign you wish to register: verbal sign (words, a sentence, an expression), a figurative sign (an image, a logo, a drawing, this sign has to do with the sight), semi-figurative sign (mixing a verbal and a figurative sign), an audible sign (providing it can be transcribed upon a musical staff), tridimensional sign.
– The ranks of the products and services you wish to protect, by referring to the “Nice Classification”.
– The countries in which you want to register and protect your trademark; this implies that your sign fills all the criteria in all the different countries.
After applying for the registration of your trademark, the bureau that will have received your application will carry out researches of anteriority, to make sure that your sign abides by all the criteria required by the law. This phase goes with a period, called “of opposition”, during which owners of a trademark who think that your application could harm their trademarks, can oppose the registration of yours.
Once your registration is done and the opposing period has ended, the bureau can then permit the registration of your trademark. You then become its holder.
A trademark is generally valid for ten years and can be renewed indefinitely. The owner of a trademark has to be up to date regarding the payment of his or her charges, such as the sums owed to the board for the registration and keeping or the renewal of his or her trademark; otherwise, it can be canceled.
Be careful! The acceptance of your brand’s registration files does not render it valid. If your trademark transgresses the legislation (descriptive, deceiving, unavailable sign) any person who has an interest in it, can ask for its annulment in court. When it is time to register your trademark, seek professional help to examine your application file. An expert will find out if your trademark can be recorded without complications and if it does not run the risk of being nullified at any moment.
Once your trademark is registered, use it as you see fit. You can decide to be the only user or to sign license agreements and allow other companies to use your trademark, like distributors who will be looking to sell your product. Your trademark can acquire some real value and you can decide to sell it to a rival.
Let us use the example of the Orange brand again. It is about a semi-figurative trademark, since it is made of the sign Orange and the logo representing an orange square. This sign is distinctive, because the term orange is not usually employed to designate telecommunication services; it is not deceiving since it does not mislead the consumer about the quality of the provided product or service; and it does not go against moral values.

Locally
Intellectual property right protection is independently assured in every country. In general, the registration of a trademark is done through a national office.
Most of the countries in the world are members of the World Intellectual Property Organization-(WIPO) and respect the general principles stated in adopted treaties with that organization. By contrast, some countries are not members of the Madrid Union, and do not offer, in this case, the possibility to opt for an international registration.
On the African continent
– The African Intellectual Property Organization (AIPO) provides a common framework to its seventeen member states, on the basis of the European’s IMHB ( the Internal Market Harmonizing Board) model, charged with collecting applications for the registration of a trademark and to register drawings and patterns. The AIPO allows for registration on a national board, to give protection to the trademark inside all member states. AIPO has become a member of the system of Madrid since March 5th, 2015, which allows the depositors to apply for an international registration.
– The African Regional Intellectual Property Organization (ARIPO), “African Regional Intellectual Property Organization”, gathers nineteen states and enables a local registration of a trademark within countries that are members of the protocol (a single registration but one protection in several countries) – it is the Protocol of Banjul.

Further reading
• http://www.wipo.iny
• http://www.oapi.int
• http://www.aripo.org
• http://www.inpi.fr
• https://oami.europa.eu/ohimportal/fr/trade-mark

Author
Pierre Callède

COPYRIGHT
Entrepreneur Club and Vaughan Avocats

LEXICON
Monopoly: privilege offered to a physical or moral person alone to use one thing (for example, monopoly to sell electricity granted to a company)
Nice Classification: international classification of products and services to achieve the registration of trademarks (for example, class 1 corresponds to the chemical products.)
The system of Madrid: indicates a cluster of member states of the Madrid Union agreement (protocol of Madrid or arrangement of Madrid) and these states can in this way proceed to an international registration.
International registration: possibility offered to the depositors from a member state of the Madrid system to see the national record for other member countries of the Madrid system (for example, a depositor from Cameroun can see his Cameroonian trademark being protected in the whole European Union)
Distinctive: indicates a descriptive sign which does not satisfy itself with the description of the indicated product or service in the application for a trademark.
Deceit: Character of a distinctive sign that can mislead the consumer when it comes to the quality of the thing or its real origin (for example, “Savon de Marseille” or soap from Marseille for soap not made in Provence, or Apple Bio for fruit not coming from biological agriculture).
Moral values: indicates the rules derived from the morality, religion and culture of a country at a given moment (for example, prohibition of advertisement that has a pornographic and violent character in public places.)
Tridimensional trademark: indicates the protection granted to the packaging of a product as a distinctive sign (shape of a bottle of Perrier, of a bottle of Orangina, of Toblerone chocolate bar).

Testimony
The trademark is a formidable tool for capturing consumers, extremely accessible and which can even, gradually, forge a company’s patrimony. We vivaciously advise our clients, when they have the opportunity, to register a trademark, and if they can afford it, to give this registration an international influence.” Pierre Callède, Partner, Vaughan Avocats