SHOULD I FILE MY COMPANY NAME AS A TRADEMARK?
1. If I use my company name also as a trademark for commercializing my products or for providing my services, it is appropriate to file it as a trademark because the protection afforded to a trade name or a corporate name is different from the protection granted to a mark:
- The corporate name or the trade name identifies a company and its activity in general; the corporate name is protected in the territory in which the company has its head office; the trade name is protected in the territory on which it is known to the public, which requires proof of its use and of its recognition by the public; in France, these two types of signs, provided that they are distinctive, are protected through an unfair competition action, which implies the proof of a fault, a damage (risk of confusion) and a causal link.
- The mark serves to distinguish the products and services of one undertaking from those of competitors; it is protected in the territories where it is registered for the goods and services covered by its registration. The evidence of use is required only if the mark is registered for more than five years in order to resist a possible revocation action. The mark is protected against the reproduction or imitation by third parties for identical or similar goods and / or services.
The French IP Code provides the registered trademark holders with tools to fight against counterfeiting (counterfeit seizure procedure, customs detention procedure, destruction / forfeiture of stocks and of means of production, fine and prison penalty) and provides for alternative methods for the assessment of damages (negative economic consequences (lost profits, losses + profits made by the infringer) or lump sums greater than or equal to a license fee)
In this case, the sign must also be used as a trademark, and not only as a company name, which means that it must, as a mark, be especially affixed to products, advertising and commercial documents, invoices and not only be displayed as the name of the company. Indeed, a use of the mark as a company name or as a trade name does not allow a mark to resist revocation. Finally, a trade name and a service mark serve a very similar purpose if the services are covered by the activity of the company, and the proof of use of the trade name can amount to the proof of use of the mark.
2. Even if I do not use my company name as a trademark, I may have an interest to file it as a trademark to create for myself a property title that will be a part of my valuable assets and that will allow me to bring an infringement action against any reproduction or imitation by unauthorized third parties for identical or similar goods / services. However, beyond a period of 5 years, that mark will be liable to revocation due to non-use, but will still have a deterrent effect as long as it will not be revoked by a court or an office.
Rest of the article : Can I file as a mark signs other than logo or words ?
Previous part of the article : Should I file a mark even if it is “weak”?
Publication date : February 2016