to bear a particular mark, for which it makes a charge, as in the case of the assay-mark of silver, and stamp on newspapers” (Say 1972, p. 244). This is where the essential principles of liberal theory come into play. In the operation of the overall system, the entrepreneur is at the center of the system, since, on the one hand, they receive impetus from the market and, on the other hand, they choose the optimal combination by putting the various factors together. This simply means that the entrepreneur, by distributing profits, pensions and salaries, the amount of which is equal to what they have produced, generates purchasing power.
Liberal capitalism has allowed the remarkable rise of Western societies; in the clarity of its proof, the “liberal” model has long masked imperfections in the real functioning of economic systems, such as the domination of monopolistic firms. But the pressure of facts and social necessities has forged the appearance of a mixed system, in which the action of the State has become increasingly significant. Concretely, all products are not equal; they can be differentiated. The product differentiation strategy aims to introduce a distinction between the products manufactured and sold by the firm and the products of its competitors. Branding helps to highlight this differentiation and the relative advantages, perceived as unique by consumers. The brand makes it possible to distinguish products; this distinction is important in the specification of a product and makes it possible to determine its added value. In this vein, Kapferer and Thoenig (1989) point out that the brand makes it possible to globalize all the information related to the differences between products. The brand indicates the differences between suppliers. Thus, the consumer buys the product according to the specific characteristics conveyed by the brand and pays the corresponding price, which allows the company offering the product to make an additional profit. The usefulness of the product for the consumer is thus defined. Brand value depends on the consumer’s interest in the elements of difference and specificities conveyed by the brand that lead to the purchasing act.
1.1.2. The brand’s legal character
The first text that applied to the protection of brands was so harsh that the law was hardly applied at all. Indeed, this text provided for heavy penalties against counterfeiters (Title IV of the law of 22 Germinal year XI (April 12, 1803)). The following text (the law of July 28, 1824) followed the same path and proposed criminal sanctions for any use and affixing of another person’s trade name to products. The repeal of this text was obviously proposed. The law of June 23, 1857 was the first modern text, or at least the text which is at the origin of modern brand law. It laid the foundations for the major principles attached to brands and defined the property rights at the first act of using a brand.
During the 19th Century, the law followed the logical mechanism developed by economic theory by enacting a law intended to ensure the protection of the trade name when it was affixed to products. But this was not enough, since the protection of a name could not be assimilated to the protection of a brand. This was all the more true since economic necessities and trade exchanges prompted the enactment of a brand law to supplement the trade name law.
The idea was, as Burst and Chavanne (1993, p. 456) pointed out, to ensure that “brand ownership is acquired by first use”, although analysis of this principle revealed that it was particularly unfair.
Legislators also reconsidered their position on this subject and, during the 20th Century and the development of advertising, felt the need to enact a new law. The law of December 31, 1964 provides that the rights attached to a brand are acquired exclusively by registration in the context of a brand application and no longer by use, and requires the administration to examine the application before filing. This law also introduces a possibility of revocation of the rights to a brand linked to failure to use it for five years. Following the drafting of this law, four other laws and two implementing decrees were enacted. It is understandable that the legislative arsenal became complex to ensure brand protection. The pace at which the laws were enacted was thus accelerated. Interest in brand protection grew and became a real economic issue that needed to be legally regulated.
Returning to the modalities of filing and for more details, Law No. 64-1360 of December 31, 1964 established the principle that the filing date was the starting point for brand ownership by an individual or a company, and also made it possible to solve the problem of bottlenecks due to the large number of filings. The resulting property deed thus became verifiable, indisputable and perishable. A special right was introduced by law, the principle of brand revocation, which is still valid today and which requires the use of the brand in order to retain ownership. Thus, under the terms of Article L. 711-1 of the French Intellectual Property Code, “a brand or service mark is a sign capable of being represented graphically to distinguish the goods or services of a natural or legal person.” It is thus part, alongside the trade name, sign or appellations of origin1, of the distinctive signs that make it possible to attract and retain customers.
The constant changes in the law lead us to assess an unavoidable evolution of brand law from national law to European law and even to international law, insofar as the Singapore Treaty was adopted by the WIPO (World Intellectual Property Office). This text made it possible to globalize brand law, in particular, for the monitoring of the registration and renewal procedures of property titles, in an electronic format, bearing in mind that the international registration of brands has been governed since 1891 by the Madrid Agreement and since 1989 by the Madrid Protocol and allows for the centralized registration of formalities for the acquisition of a property title in several countries.
The evolution of trade and the accompanying legislation was taken into account by the European Community, which issued a Community directive on December 21, 1988 (No. 89/104/EEC), which was, in turn, translated into French national law by the law of January 4, 1991 (No. 91-07), which finally came into force 11 months later, on December 28, 1991.
It was about time, as this was the deadline set by the European directive. However, in order to harmonize national legislation and in view of the difficulties in transposing the directive into national law, the Council decided, on December 19, 1991, to postpone the date of application until December 31, 1992. This law made it possible to clarify and distinguish the concepts of “brand degeneration” and “revocation of the brand for lack of exploitation” and laid down the procedural rules for acquiring or maintaining the right of use.
The text was finally marginally modified by a new directive, on October 22, 2008 (No. 2008/95/EEC). The number of legislative texts on this subject follows a succession of developments detailed below. The brand is thus governed by national, European and international texts. Legal harmonization allows for a global vision of brand law and allows for an understanding of the protection enjoyed by brands.
Subsequently, the European Commission relaunched the process of harmonizing brand law, which made it possible to adapt to the modern environment and to take into account the case law established since the 2008 directive. The scope of brand protection was thus broadened. Indeed, the concepts of geographical indications of brands, guarantee trademarks and collective trademarks were introduced. The procedures for opposition and cancellation of trademarks were modified. The text also provides for an overhaul of the classes of trademarks, the aim being to precisely list the goods and services by class category.
Later, the rules that opposition to the use of a trademark had to be made at the time of registration and not after registration, and proof of use by the opponent had to be provided were introduced. Thus, future applicants will have to extend their background checks before filing. It should be noted that requests for opposition and cancellation of trademarks will be more frequent, particularly if the trademarks are not being used continuously or if they have become generic or misleading. In practice, Regulation (EU) No. 2015/2424 of the European Parliament and of the European Council entered into force on March 23, 2016 and the Community trademark became the brand of the European Union.
Mathely
