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 (1984) points out that “the brand is 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