When you choose to file a trademark registration can have a direct impact on its validity. Too soon and it could lapse for non-use; too late and it could be invalid. Sigolène Pellet discusses the key elements to consider when determining the right time to register a trademark.
Trademark registration: The risks of filing too early
Once a trademark is registered, its owner has a specific period to start using it for the goods and/or services protected. After this ‘grace’ period has expired, a trademark can be revoked for non-use if it is challenged by a third party or cancelled by the trademark office. Cancellation by a trademark registry can occur, for example, if trademark maintenance is subject to the filing of a declaration of use as is the case in countries such as the United States and Mexico.
The length of the grace period varies by country, but is generally between three to five years from the registration or publication of the trademark. Filing too early, therefore, could risk the trademark being lost before it has even been used.
- → To mitigate the risk of filing too early in your territories of interest, it is advisable to find out the period of compulsory use in all countries of interest and to ensure that the mark will be used before the relevant grace period(s) expire.
Trademark registration: The risks of filing too late
Delaying the registration of a trademark intended to cover your goods and services can be fatal to the trademark and sometimes even to the project itself. For a start, it is recommended to wait for the registration of the mark before communicating about it or starting to affix it to products.
In addition, there are several dangers that could threaten the trademark before it is registered, starting with the risk of refusal by the office based on an absolute ground such as the lack of distinctive character of the sign. In most cases, this type of refusal, although leading to the rejection of the trademark, does not prevent its use. However, it is harmful to start capitalising on a trademark that is not protectable.
Alternatively, a third party may be able to oppose your trademark application on the basis of an earlier right. Should they succeed, your trademark application will not only be rejected, but you could also be subject to an infringement action in case of use of the litigious sign.
Of course, obtaining a trademark registration does not guarantee that you will completely eliminate the risk of action by holders of prior rights. It is still possible for another party to bring invalidity and/or infringement actions throughout the life of the trademark. However, the risk is much higher at the time of filing due to the publication process, so once registered, the trademark is relatively strong.
Communicating on a trademark before its registration is risky, therefore. It would be unfortunate indeed to have to change the trademark when it would already be affixed to products and promotional materials and when the clientele is already familiar with it.
- → If possible, therefore, it is advisable to file your trademark application relatively early before the launch of the trademark and to wait for its registration before starting to communicate and capitalise on it. In this way, it would be less difficult to switch to another mark if the first one is refused registration following a decision by the office or an opposition.
Before considering filing/launching a trademark, it is advisable to keep in mind the average time needed to register a trademark, as this can vary greatly from one country to another. For example, it takes around six months to register a trademark in the European Union, whereas it can take years in countries such as Australia, Nigeria or Pakistan.
- → Therefore, when you talk to your IP attorney about your trademarks, do not hesitate to ask them about the registration times in the various countries of interest.
The risk of refusal or opposition is not the only reason to ensure your trademark application is not filed too late. In some cases, late trademark filings may be considered fraudulent (i.e. made in bad faith). This can be the case, for example, if a trademark is filed after the expiry of another IP right, such as a design or a patent (see for example Ceramtec, 25 June 2021, RG 18/15306). By seeking to extend an IP monopoly, such filings are considered to be a misuse of trademark rights.
It should be noted that the use of several IP rights to protect the same creation or invention is not what is prohibited here. Rather, it is the act of filing a trademark shortly before or after the expiry of the other IP rights that may be considered suspicious. It is wise to consider these different protection mechanisms from the beginning of the project therefore.
Finally, delaying the filing of a trademark can lead to rejection or invalidation through lack of distinctive character. This can be the case when the sign in question is too well known at the time of filing to be perceived as a trademark, i.e. a sign whose function is to indicate a commercial origin.
The trademark application ‘1984’ and the 3D trademark for the iconic shape of Moon Boot snow boots perfectly illustrate this point. The European IP Office (EUIPO) rejected the attempt to register ‘1984’ as a trademark on the basis that the sign is too closely associated with George Orwell's novel of the same name. It is so well known that its title has passed into common parlance, meaning the application does not possess the distinctive character required for a trademark registration (EUIPO, 4 July 2019, R-017869425). The case is currently before the EUIPO's Grand Board of Appeal.
Similarly, the Moon Boot case concerned a three-dimensional trademark registered more than 20 years after the first marketing of the après-ski shoe of the same name. At the time of filing, this shape was already omnipresent on the market so that, in the context of an action for cancellation, the European Union Court considered that this sign was not distinctive with regard to the standards and habits of the sector but rather a simple variant of the shapes in the market (see January 2022 ruling here). This 3D sign was undoubtedly distinctive at the time of its launch but had become generic by the time of the application. Secondly, the European IP Office (EUIPO) also rejected the company’s attempt to register ‘1984’ as a trademark on the basis that the sign’ is too closely associated with George Orwell's novel of the same name to possess the distinctive character required for a trademark registration (EUIPO, 4 July 2019, R-017869425). The case is currently before the EUIPO's Grand Board of Appeal
Filing a known sign too late is also risky therefore.
How to choose the right time for your trademark application
To determine the appropriate time to file a trademark, the following elements should be considered, therefore:
- The period after which the trademark will be subject to the use obligation and the presumed date of commencement of use.
- The average time taken to register the trademark in the territory of interest.
- The period of protection of other IP rights to which the creation or innovation covered by the trademark application is subject.
- The level of knowledge of the sign by the target public.
For more information or targeted advice on this topic, speak to your Novagraaf attorney or contact us below. For additional advice on choosing the right trademark for your business, download our helpful factsheet ‘7 steps to creating a strong brand’.
Sigolène Pellet is a Trademark Attorney at Novagraaf in Paris.