2. Is it worth registering a trademark?
Not always: you have to sort it out according to the circumstances.
Whether or not it is worthwhile to register a trademark depends on several factors:
- the type of products or services marketed (high-end, high value-added or not);
- the type of marketing channels (online sales, international sales or not);
- the innovative nature of the product (creation of a new market or not);
- the period of development of your company (growth phase or not);
- the strategic nature of the sign (is the sign coveted by other companies or not?)
We discuss this below. But first, let’s remember what the purpose of registering a trademark is.
2.1. What is the purpose of a brand?
The brand distinguishes your product from a competitor’s product.
Consumers can identify the product by the brand, and repeat a favourable consumption experience.
The trademark also helps consumers to identify themselves when shopping by allowing them to rely on the fact that products of the same brand offer the same quality.
2.2. Can filing a trademark be useless?
Yes. Registering a trademark also costs money. Do you have to register your trademark? Think again: are you REALLY interested in registering your trademark?
I must confide in you: for a long time I thought that trademark law was useless.
Don’t get me wrong, I have never doubted that trademark law is of interest to Coca-Cola, Dior or Mercedes. In short, for multinational exceptions that need to protect themselves from foreign counterfeiting.
For an SME, the usefulness of registering its trademark is less obvious. There are several considerations that justify questioning the registration of a trademark:
- It is not necessary to register your trademark to start using the sign (especially since it is always possible to register your trademark after you have started using it);
- Registering a trademark is a cost (albeit a moderate one). This, even though the finances of an SME are generally limited;
- the cases of copying a little-known brand are relatively low.
It is primarily the nature of the business activities (the extent of the business activities, but also the property to which they relate) that determines whether or not there is an interest in registering a trademark.
Thus, there is little point in registering a trademark for a hairdresser’s salon or a restaurant whose ambitions are purely local.
In these two cases, the protection that is “automatically” attached to the trade name or domain name is more than sufficient. On the other hand, registration of a trademark becomes useful again if you wish to develop a franchise.
2.3. Does registering a trademark make money?
Yes, trademark registration is the source of great success stories
Experience now leads me to moderate the cynicism of my younger years and my initial scepticism.
There are several examples that demonstrate the usefulness of registering a trademark at the right time, even for an SME. By way of illustration, let us cite the following examples of (initially) small – or even purely local – companies that have managed to build their success around a strong brand:
- IceWatch: thanks to a promising design, but above all through effective marketing, the Liege-based company succeeded in creating a phenomenal buzz around a plastic watch, which is a classic and easily reproducible product;
- Breizh Cola : surfing on a particularly marked regionalist spirit, the “Cola du Phare Ouest” quickly created a strong commercial identity for itself through its brand, which is now distributed well beyond Brittany;
- Curtius: in addition to its undeniable gustatory qualities, “the beer from Liège” has established itself through top-of-the-range packaging, an effective marketing strategy and a brand that is already easily identifiable by the consumer (the “Curtius” being a museum eponymous with a historical figure, benefactor of the Cité ardente);
- Marcolini: anxious to protect the image of excellence of its creations, the Brussels chocolate maker has registered its name as a trademark to tackle the export market.
2.3 When should you register your brand?
Trademark registration is useful in the following circumstances:
- if your product/service is aimed at the top of the market (high-end), especially in a market of homogeneous products (cola, beer, chocolates, etc.): the trademark is then the main demarcation tool; it is crucial to protect it; it is important to remember here that any unregistered trademark can be registered by a third party even if you have started to use the trademark
- if you have international claims, including as soon as your product is sold online:
- in view of the large number of trademark conflict situations likely to arise in a globalized market (even for a French-language trademark: the French-speaking world is vast);
- Registering your trademark helps to fight against trolls (or cyber-squatters), who create parasitic websites close to the trademark name and then force you to buy the website address of their ghost site;
- Registering your trademark in Europe can then facilitate the registration of the trademark in other jurisdictions – including, notably, the United States;
- if you create a new market, which is quickly identified with the name of your product (e.g. “Bic” for biros; “Frigo” for fridge; “Ice-Tea” for iced tea, the second producer having to settle for the bastard name “Nestea”);
- if the sign is strategic;
- generally speaking, when success is on the horizon.
Would you like more advice before filing your trademark? Would you like help to register your trademark? Do not hesitate to contact us!