Conseil en Propriété Industrielle - European Trademark, Patent & Design Attorneys

Glossary

In this section you will find definitions of the terms frequently used in our business.

APPELLATION OF ORIGIN

An appellation of origin is the geographical name of a country, region or locality that serves to designate a product originating therein, the quality or characteristics of which are due to the geographical environment, including both natural and human factors.

AUDIT

In the field of intellectual property, the audit consists of evaluating the intellectual assets of a company, its management and its profitability in order to orientate company policy in that field. This type of audit allows for:
– confidence in an investment decision;
– identification of changes to make regarding an intellectual property right;
– assessment as to whether litigations against third parties are worthwhile;
– evaluation of the exploitation of intellectual property rights;
– checking the tools used in intellectual property.

DATABASE

A database is a collection of works, data or other independent elements, organized in a systematic or methodical way, and individually accessible by electronic means or by any other means. It is protected on two different grounds:
- its content is protected by specific rules in accordance with the European Directive 96/9/CE transposed in France in the Intellectual Property Code;
- its form, meaning the choice or disposition of materials/elements, is protected by copyright.

PATENT

A Patent protects an invention defined as the technical solution to a technical problem, by giving its owner an exclusive right on the invention.

COUNTERFEITING

Civil infringement proceedings is a legal action that may be instituted by the owner of a right attached to any creation qualifying for intellectual property rights (a work, a trademark, a design, but also a patent).

In trademark matters, counterfeiting acts cover all illegitimate infringements of the sole rights attained by the person entitled to the trademark. For instance, unless authorized by the owner: the reproduction, use or affixing of a mark, the use of a reproduced mark for goods or services that are identical to those designated in the registration or unless authorized by the owner, if there is a likelihood of confusion in the mind of the public; the reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration.

In literary or artistic works, the proceedings can be initiated by the owner of the rights attached to the allegedly counterfeited work or by the beneficiaries, or even by the Department of the Public Prosecutor. The author who has transferred his pecuniary rights still has the option to go to court on the grounds of his moral rights (right of paternity, right to the work integrity, right of disclosure), which are untransferable, imprescriptible and permanent.

TRADEMARK REGISTRATION

The application for registration of a trademark is filed by the applicant or an Agent, either directly at the Institut National de la Propriété Industrielle (INPI), or at the Commercial Court Registry (or the French First Instance Court in civil and criminal matters), within the jurisdiction of which the applicant is domiciled or has his business, the Commercial Court Registry transmitting the application to the INPI.

If the applicant or his head offices are established in a foreign country, he must elect domicile in France and appoint an Agent established in France.

DESIGNS

The term Design covers two-dimensional drawings and three-dimensional models, in color or in black and white, in draft or final form. Both types are protected by the same system. Design rights only protect creations of ornamental nature, by opposition to technical creations, particularly protected by Patents.

Copyright protects original works. The original work is protected by its mere creation. Copyright can be divided into two series of prerogatives: moral rights and pecuniary rights.

The moral rights are attached to the author in person, and are, consequently, inalienable and not distrainable. It includes four distinct attributes:

- The right of disclosure: the discretionary and sole right of the author to decide if his work is in a condition to be presented to the public and, if so, to set the modality of its disclosure;

- The right of paternity: the author’s rights in respect to his name and capacity.

- The right of work integrity: the rights granted to the author to forbid any modification, mutilation, addition or change of the work.

- The right of withdrawal: the rights granted to the author to either take his work back and interrupt the contract, to improve, transform or redo his work, or to withdraw it, if he judges it unworthy of his talent or if the work no longer corresponds to his philosophical, scientific, moral or artistic ideas.

The concept of pecuniary rights covers the following:

- The copyright: the sole right given to the author to authorize the copy of his work. Considered a copy, it is the material fixing of a work by any process that allows an indirect communication to the public;

- The right of performing: the author’s decision to communicate the work to a given public, the public being or not being present at the place where the communication takes place;

- the right to follow property: it consists in allowing the artist to receive a percentage of the resale price in some categories of works.

PRIORITY RIGHTS

When applying for national registration, or first filing, in one of the countries belonging to the Union Convention of Paris, a six-month (for trademarks, one year for patents) time limit, or priority period, is granted to the applicant to file in another member country of the Paris Union and to claim the first filing date. Many countries are a member of the Paris Union.

RELATED RIGHTS

These rights are exclusive monopolies, different from copyright, taking some of their features from copyright but which, contrary to the former, do not appear by the fact of the creation of the work but derive from their circulation (recording or circulation). They are acknowledged for performers, producers of phonograms, and audiovisual communications companies.

LICENSE

A license is a contract under the terms of which the owner of a trademark (the licensor) authorizes a third person (the licensee) to exploit the trademark under the conditions and the respect of limits and provisions stated in the contract. It generally implies that the licensee pays royalties. This contract is called a user license, and is subjected to the rules of ordinary law. In this way, the licensee will be authorized to affix the trademark on the products and services covered by the license.

SOFTWARE

A software is a set of computer elements (programs, rules and procedures, sometimes documentation) allowing for the completion of a task or a function (e.g. accountancy software).

TRADEMARK

A trademark is a sign that makes it possible to differentiate the products and services of a company from those of a competitor. Trademarks take a variety of different forms: patronymic or fanciful names, figures, letters, drawings, and combinations of colors.

ORDINARY COLLECTIVE TRADEMARK

A collective trademark is a trademark that can be used by anyone respecting the rules of use established by the person entitled to the registration. A collective trademark belongs to a legal entity (e.g.: a union of producers…).

COLLECTIVE TRADEMARK OF CERTIFICATION

The collective trademark of certification is used to indicate and guarantee that the product or service marked shows specific characteristics (e.g.: a label is a collective trademark of certification).

DOMAIN NAME

The domain name is an address easy to remember to identify Internet operators. It is actually the correspondance in letters of the number attached to a computer connected to the Internet.

Two types of domain names exist:

- the gTLD (generic Top Level Domain): .com, .net, .org, etc. They are managed by registration services administrators authorized by the Internet Corporation for Assigned Names and Numbers (ICANN);

- the ccTLD (country code Top Level Domain): .fr, .de, .etc. They are managed by the national bodies in charge of registration.

OPPOSITION

Within two months following the date of publication of a trademark filing in the Bulletin Officiel de la Propriété Industrielle, the person entitled to a prior right can file opposition against registration before the Director of the INPI.

TRADEMARK PORTFOLIO

A trademark portfolio of a natural person or a legal entity is constituted by all the trademarks registered throughout the world in the name of this person or entity.

INTELLECTUAL PROPERTY

Intellectual Property includes all the rules protecting industrial property rights and copyrights. Industrial property includes all the rules regulating patents of invention, trademarks, designs, trade names, geographical indications and appellations of origin, and unfair competition.

CLEARANCE SEARCHES

We advise undertaking clearance searches prior to filing a trademark. These searches are made amongst trademarks, company names and Internet domain names. The type and method of searching to be applied largely depends on the type of signs, products and services to be protected and on the territories where this protection is applied for.

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