The validity of the mark

Let's continue our exploration of trademark law by its conditions of validity. To be valid, a mark must be lawful, distinctive and available. These conditions are appreciated at the time of filing the registration.

1) The mark must be lawful (Article L. 711-3):

  • The sign must not be illegal in the strict sense: it is not possible to use as marks signs referred to in particular by the Paris Convention of 1883 (coats of arms, flags, emblems …), by the international convention of Geneva of 1905 or by the law of October 29, 1975.
  • The brand must not be contrary to public order and morality
  • The mark must not be fraudulent or deceptive, ie the sign used must not mislead the consumer as to the nature, composition, qualities or destination of the product.

If one of these conditions is not fulfilled, the mark is unlawful and is absolutely void, which means that everyone has an interest in demanding the nullity.

2) The mark must be distinctive (Article L. 711-2): the distinctive character of the mark is assessed in relation to the goods or services indicated in the deposit form. Are not considered distinctive:

the necessary or generic marks:   "signs or names which, in everyday or professional language, are exclusively the necessary, generic or usual designation of the product or service" are devoid of any distinctive character. However, in certain sectors of activity, case law accepts the registration of very distinctive marks. Similarly, generic terms translated into foreign languages ​​are only distinctive if they are not trivial and their meaning ignored by many people.

descriptive marks: "signs or names which may be used to designate a characteristic of the product or service, and in particular the species, quality, quantity, destination, value, geographical origin, date of production of the product, good or service provision "are descriptive and therefore prohibited. If the mark turns out to be necessary, generic or descriptive, it will be absolutely void.

3) The mark must be available (Article L. 711-4): the sign chosen as a mark must be free of rights, ie for the intended field of activity, it must not be already object of an earlier right conferred by:

  • an earlier registered or well-known mark
  • a name or business name
  • a commercial name or a sign known throughout the national territory
  • a protected designation of origin
  • Copyright
  • rights resulting from a protected design
  • the personality right of a third party
  • the image or fame of a local authority

4) The principle of specialty: the registration of the chosen sign gives the holder an exclusive right of exploitation for his sector of specialty, that is to say only for the goods and services designated at the time of the deposit. An administrative classification is proposed at the time of filing to designate the goods or services, but it has no legal significance. This principle is essential in trademark law because it makes it possible to assess the availability, the novelty or the distinctiveness of the sign.