a sign that distinguishes the objects of an enterprise’s industry or trade, and more generally, the objects resulting from a person’s economic or social activity.” The interest of using brands clearly consists, for the entrepreneur, of obtaining a particular protection that will allow them to obtain an identification both in space and time, but before all the determinations related to the brand are available, the use of it is an obligatory step.
Burst and Chavanne have clearly defined the notion of “notoriety”: “For there to be a well-known brand, it is necessary for the public to have the almost automatic reflex of thinking of the product or service it represents when it is mentioned” (Burst and Chavanne 1993, p. 545). It is understandable that the use of the brand is not sufficient to identify it and that it is necessary that the methods of filing be implemented to allow for the protection of the owner of the right. Without this filing, it becomes difficult to claim their right to use the brand and to obtain an evaluation of it. The filing is the only guarantee for the protection of property rights.
Brand ownership is obtained from the first filing, but it must still be technically done successfully. The same applies to the renewal procedures, which may or may not be granted. Once the application is filed, the brand necessarily has a purpose that will lead the company to use it.
The interest for the company consists of acquiring property rights, as well as enabling them to give a personality to the product which will, in fact, be protected. This protection is constitutive of the materialization of the product and, potentially, of its notoriety; the latter passes by a prerequisite: the personality of the product which is acquired by the commercial exploitation and the advertising which surrounds it.
With this protection assured and this personality acquired, the brand, as an identifiable distinctive sign, will enable the entrepreneur to ensure the development of their business, provided, of course, that the consumer is attracted by its products. In any event, if this process leads to the development of the business, then the brand’s economic value may be established.
Bictin states that “the descriptive character of a brand is assessed in relation to the products for which it was registered and by taking into account the presumed perception of those goods by an average consumer, who is normally informed, reasonably attentive and informed” (Bictin 2014, p. 455). The brand is protected insofar as it is not possible to reproduce it without the owner’s authorization, and any use made in contradiction with this principle would be an infringement. Of course, a similar sign is not necessarily a reproduction, even if the risk of confusion is significant. The brand owner may therefore act under all of these prerogatives to defend their brand.
In another register, Burst and Chavanne state that “the brand is a factor in sales promotion to the point of having an impact on customers that would ultimately be unrelated to the product’s quality” (Burst and Chavanne 1993, p. 460). Commercial brand development can also be envisaged by other means than those we have seen. Indeed, the brand can be licensed. This means that the brand license granted in this context is given by the brand owner to a third party who will use it. Thus, the third party beneficiary will be able to affix this brand to their products and use it commercially. The multiplier effect that can be achieved by the brand owner through this contract is linked to the fact that the license may be limited in space, regardless of the territory granted, in time and in the allocation to a given category of products. Finally, the license may or may not be exclusive.
It is understood that the modalities of brand exploitation can be done by other means than direct commercial exploitation. Licensing a brand implies having previously succeeded in a development that could seduce a third party who would like to use a license to exploit it. Moreover, the license also allows the original owner, who has filed a registration in territories not commercially exploited, to ensure a presence in those territories without themselves directly using their products, thus avoiding a forfeiture of their right to use the trademark in those particular territories.
The challenge for companies is to imagine and use an original and available brand. Conceptually and legally, the brand cannot correspond to a sign contrary to public policy or morality, and the consumer cannot be misled about the nature, quality, composition or origins of the product. Apart from this, the law insists that brands may not lead the consumer to confusion, so that the misappropriation of an existing brand is impossible.
The Intellectual Property Code details that a brand may be composed of various signs, letters, numbers, initials, invented names – it is even possible to use one’s own name, provided that it does not lead to a risk of confusion with a known brand, sign or denomination – and drawings; if these are protected by copyright, it is necessary to obtain the author’s consent.
Brands may, in particular, be different from the trade name and commercial signs already used by the company. It is not possible to use generic signs; in practice, it is essential that the brand is original. In France, for example, in order to obtain this protection, it is necessary to make the application by sectorial classes. If the application does not specify certain sectorial classes, then the brand will not be eligible for protection in this category.
From that moment on, brand ownership is acquired indefinitely, provided that renewing this protection every 10 years is taken into account. This protection makes it possible to defend oneself against any infringement in court and to obtain the seizure of the infringing objects. These imitations may give rise to civil and criminal proceedings. However, in order to assert these rights, it is necessary to use the registered brand for five years after registration; otherwise, the risk of forfeiture is incurred.
The property right accompanying the brand may be lost in various ways, such as non-renewal at the end of 10 years of protection or simply by renunciation of property rights, as well as a result of forfeiture, provided that the person who applied for it can prove such an occurrence.
Forfeiture may also be recognized by the degeneration of the trademark as a result of the inactive behavior of the brand proprietor in defending their property rights, and that the trademark has become a common name commercially and the name is recognized as a generic term designating goods of the same class. The same applies if the brand becomes deceptive insofar as it could mislead the consumer. Invalidity is the final cause of loss of use of the brand. If bad faith is proven at the time of filing or if the filing is made in violation of other property rights, such as the right to a name, the right to an image, copyright or any other intellectual property right, nullity may be pronounced.
Subsequently, an order of November 14, 20192 amended the substantive law and procedural rules applicable to product brands and services. This order notably sets out the contributions of the “brand package” and ensures the harmonization and modernization of French trademark law with the European Union’s trademark system.
1.1.3. The brand’s economic nature
As we have discussed, the origin of brands goes back to the time when Roman potters identified pots according to their workshop by marking them. The purpose of this practice was to identify the origin of the pottery. According to Gabler et al. (2009), this also helped to trace the trade routes followed by the pots coming from different western workshops; they could, in this way, even identify some of the large workshops that dominated the Pannonian market. It appears, from that moment on, that the distinction between production and items sold was made in a clear manner, without giving them a “commercial” meaning. It is understandable that the prerequisite for the modern vision of brands is the identification of the products made by the craftsmen, who were thus able to mark both their product and, above all, the ownership of their industrial production.
This notion of ownership is fundamental to the appearance of the brands we know today. This point was addressed by Jean-Baptiste Say (1972) in his treatise on political economy, based on the simple exposition
