Distinctive sign

A distinctive sign is any sign that a business uses to identify, on the market, its goods, its services or itself, and to distinguish them from those of its competitors. The category comprises the trade mark, the company name, the trade name, the shop sign and the domain name, to which geographical indications are added. Only the trade mark is the subject of an exclusive right organised by the French Intellectual Property Code, in Articles L. 711-1 et seq., the other signs falling essentially within the law of civil liability.

The variety of distinctive signs

Distinctive signs do not all designate the same object. The trade mark identifies goods or services. The company name identifies the legal person itself and comes into being upon the registration of the company. The trade name and the shop sign identify the business or the establishment, and are acquired through use. The domain name identifies a location on the network and is obtained by a contractual registration with a registrar, which in itself confers no intellectual property right. A single word may combine several of these capacities, each of which is then governed by its own rules.

Acquisition and loss of the right

The trade mark is acquired by registration, in accordance with Article L. 712-1 IPC, for ten years renewable indefinitely, and is lost through invalidity or revocation, in particular for want of genuine use over five years. The other signs are acquired and maintained through use, without any formality, and disappear with it. Priority is settled by the date of first public use for the trade name and the shop sign, by the date of registration of the company for the company name and by the filing date for the trade mark.

Conflicts between signs

Distinctive signs meet on two grounds. Before INPI and before the courts, an earlier sign may bar the registration of a later trade mark or secure its invalidity, under the relative grounds for refusal in Article L. 711-3 IPC, provided there is a likelihood of confusion on the part of the public, which in practice requires, for the trade name and the shop sign, a scope that is not merely local. Conversely, the owner of a trade mark may bring an infringement action against the use of an identical or similar sign as a company name, trade name or domain name, where that use occurs in relation to goods or services and affects the trade mark’s function of indicating origin.

Outside the field of trade marks, the conflict is resolved on the basis of unfair competition or free-riding, under Article 1240 of the Civil Code. The claimant must then establish a fault, a likelihood of confusion or an undue appropriation, and not merely the reproduction of the sign.

Key points

The distinctive sign identifies the business, its establishment or its goods, and only the trade mark confers an exclusive right through registration. The other signs are protected through use and through the action for unfair competition, provided their seniority and their reach can be proved. Before adopting a name, check the availability of the sign on every relevant register, trade marks, companies and domain names, then file the trade mark without waiting for use to create a value worth defending.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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