Creating and

registering a
brand
Creating and • 1) Search Before Filing

registering a • 2) File an International registration

• 3) Exercices
brand
1) Search Before Filing

Why search ?
The French IP Office
The International database - WIPO
Domain name
Example
 To make
sure that
your name
is available

Why search ?
o f To
ost the mak
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t he y to nd m r
o i d rn e ra ava ain n e tha
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T an yo le; e is
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 The INPI's missions are:
• To receive registration and issue industrial
property titles: patents, brands, designs and
models;
• To participate in the development of industrial
THE FRENCH IP property law;

OFFICE • To make available to the public any information

necessary for the protection of industrial
property titles;
• To centralize the national register of commerce
and companies.
• To manage the Official Bulletin of Industrial
Property.
 WIPO
• WIPO is the global forum for intellectual property (IP) services, policy,
information and cooperation. We are a self-funding agency of
the United Nations, with 193 member states.

• The mission is to lead the development of a balanced and effective

international IP system that enables innovation and creativity for the
benefit of all. The mandate, governing bodies and procedures are set
out in the WIPO Convention, which established WIPO in 1967.
 The Madrid System
• The Madrid System is a convenient and cost-effective solution for
registering and managing trademarks worldwide. File a single
application and pay one set of fees to apply for protection in up
to 122 countries. Modify, renew or expand your global trademark
portfolio through one centralized system;
• Offers National treatment.
 Who can use the Madrid System
• You can use the Madrid System if you have a personal or business
connection to one of the System’s members. This means you must
either: be domiciled, have an industrial or commercial establishment
in, or be a citizen of one of the 122 countries covered by the Madrid
System's 106 members.
 The WIPO Database

Link : https://www3.wipo.int/branddb/en/
 Example : AXE
• Axe was launched in France in 1983 by Unilever. It was inspired by
another of Unilever's brands, Impulse.

• Unilever introduced many products in the range, but were forced to

use the name Lynx in the United Kingdom, Ireland, Australia, and New
Zealand due to trademark issues with the Axe name.

• Feifer, Jason (7 August 2012). "How Axe Built A Highly Scientific, Totally Irresistible Marketing Machine Built On Lust". Fast
Company. Retrieved 15 October 2019.
• Van Den Bergh, Joeri; Behrer, Mattias (2013). How Cool Brands Stay Hot: Branding to Generation. Kogan Page Publishers.
p. 145. ISBN 9780749468057.
 Domain Name
• Although the choice of domain name is free, it cannot be purchased
for life, but only rented from a registrar for a period varying from 6
months to 10 years or directly from the registry. The world's first
domain name, symbolics.com, was registered on March 15, 1985 by
the eponymous computer manufacturer.

• Domain names can give rise to legal conflicts, each party claiming the
intellectual property of the disputed name.
• Protecting your brand or company name on the Internet involves
buying a domain name. This operation is essentially a market
economy, these web addresses are often exchanged at a high price.
• This situation results from the liberal philosophy which inspired the
creators of Internet: the system had to be very flexible and adaptable,
without bureaucratic regulation outside common technical standards,
in order to develop effectively. Which generates judicial delays.
• Since 2005, in France, it is no longer accepted that the use of a
domain name which would harm the owner of a brand can be
penalized for counterfeiting: the conditions of the latter must be
strictly met.
• A few years ago, one of the very first large-scale lawsuits concerning the
misappropriation of a domain name on the Internet caused a stir among
webmasters.
• In 1997, the municipality of Saint-Tropez launched a legal action against the
Nice company Eurovirtuel for having deposited the name saint-tropez.com
for its personal benefit. In this visibly blocked situation, the Draguignan
regional court preferred to decide in favor of the community which had
taken the precaution of registering the name in question in the trademark
register of the INPI (National Institute of Industrial Property).
• Unlike trademark protection, which is very clearly governed by the
intellectual property code, to date there is no law on domain names. Their
legal status is built up according to case law.
2) File an international
application

PROCESS

BASIC REQUIREMENTS

THE NICE CLASSIFICATION

KEY INFOS
 Process

Link : https://www.wipo.int/madrid/en/
 The Nice Classification
• The Nice Classification (NCL), established by the Nice
Agreement(1957), is an international classification of goods and
services applied for the registration of marks.
• A new edition is published every five years and, since 2013, a new
version of each edition is published annually.
• NCL: https://www.wipo.int/classifications/nice/nclpub/en/fr/
 Key Infos
• Member States : https://www.wipo.int/members/en/
• Fees : https://www.wipo.int/madrid/feescalculator
• Treaties : https://www.wipo.int/treaties/en/
 Trademark Mission I – Find a
name

3)EXERCICES
Trademak Mission II – File an
MM2 Form
 1. Create a trademark (Brand
name) which evokes and
reflects the brand's identity

TRADEMARK 2. Check if your name is

already registered in the
MISSION 1 following markets

NB: You provide the client with

a supporting document
TRADEMARK • File a MM2 Form on behalf of the company
MISSION 2
MM2 FORM

https://www.wipo.int/export/sites/www/madrid/en/forms/docs/form_mm2-
editable1.pdf