EP1397764A2

EP1397764A2 - Method for preparing a trademark registration request

Info

Publication number: EP1397764A2
Application number: EP01976342A
Authority: EP
Inventors: Marc Chauchard; Olivier Barloy
Original assignee: Cabinet Malemont-Sa; Ordipat-Sarl
Current assignee: Cabinet Malemont-Sa; Ordipat-Sarl
Priority date: 2000-09-29
Filing date: 2001-09-28
Publication date: 2004-03-17
Also published as: CA2423362A1; AU9564401A; WO2002027568A2; WO2002027568A8; AU2001295644B2; US20020042719A1; FR2814833A1

Abstract

The invention concerns a method for preparing a trademark registration request, using a local computer capable of being connected to a remote computer through an Internet-type computer network, comprising the following steps, performed in the local computer; i) inputting the mark; ii) selecting products or services to which the mark applies; iii) validating the input and the selection; iv) transmitting the validated input and selection to the remote computer via a computer network, said steps being carried out successively as indicated.

Description

Method for preparing a trademark registration request

The present invention relates to a method for preparing a trademark registration request, by means of a local computer capable of being connected to a remote computer by a computer network of the Internet type.

A trademark registration request includes the identity of the applicant, the model of the mark and

The list of goods or services to which it applies, as well as the list of corresponding official classes.

Once prepared, the registration request is filed or transmitted to the competent administration, in France, the National Institute of Industrial Property, which examines it with a view to its registration. The depositor may be assisted by a specialized representative, such as a member of the National Company of Industrial Property Attorneys.

Indeed, the preparation of a trademark registration application is an operation which involves taking into account many parameters.

First of all, it is essential to conduct availability searches before submitting the request so as not to infringe on the rights of third parties; the conduct and interpretation of such research are tasks of extreme complexity, due to the more or less relevant prior rights that may exist, for example among the corporate names or among the trademarks already registered.

These may consist of French brands, international brands designating France or even community brands.

One of the greatest difficulties, however, lies in the enumeration of the products or services to which the mark applies, as well as in the enumeration of the corresponding official classes and their number.

The products or services to which the mark applies depend on the objectives of the applicant and the choice of their wording is almost unlimited in practice.

For example, a brand can designate software, general formulation, or software for managing the movement of a computer mouse by infrared link, a much more precise formulation. For example again, a brand can designate clothing, general formulation, or swimwear for the practice of underwater hockey, precise formulation.

In fact, the choice of wording (s) of the products or services is directly dependent on the applicant's projects and the destination of the mark.

A good understanding of the depositor's objectives can be obtained when he uses specialized advisory services. Indeed, many sometimes conflicting parameters come into play: study of the portfolio of brands already registered by the depositor, short, medium and long term vision of the depositor's project, knowledge of the competition and the market, with its trends, national and international situation in the market considered, costs incurred for the research and creation of the new brand, overall budget for the operation of filing and obtaining the brand, in France and abroad, incidence at medium and long term on the depositor's brand portfolio, monitoring and similarity watches to be implemented, future oppositions and defense of acquired rights, integration of the current project into the overall strategy of the depositor or his company, etc. In each of the areas mentioned above, the depositor may decide to call on specialist advice, each in his discipline.

If one refers in particular to the preparation of a trademark registration request file, the choice of wordings to which the mark applies and the enumeration of the classes corresponding to the products or services concerned is particularly difficult intellectual gymnastics in some cases . To this end, the World Intellectual Property Organization has developed over the years a guide to the international classification of products and services for the purposes of trademark registration, hereinafter also referred to as the international trademark classification. This guide, which is subject to periodic revision, contains several thousand descriptions divided into forty two official classes, of which thirty four numbered from 1 to 34 relate to products and eight numbered from 35 to 42 on services. Each class corresponds to an official title, which very schematically represents the general field targeted by the class, but certain classes target very diverse products or services, for example classes 1, 3, 5, 9, 16, 21, 28, 30, 35 or 42. It is not always easy to establish the correspondence between the goods or services and the classes to which they correspond.

For example, software is a class 9 product, and computer programming is a class 42 service; but repairing computers is a Class 37 service; legal advice is in class 42, while law textbooks are in class 16, while law training services fall into class 41.

Other examples could be given, but we know that it is important nowadays to make the description of a patent application as concise, precise and compact as possible, so as to reduce the costs of writing and possibly of translation.

In conclusion, we note that the complexity of a registration request file may encourage a depositor to call on a member of the National Company of Industrial Property Attorneys.

Some multinational companies file numerous applications for registration each year and have decided to set up an internal industrial property service.

Objective economic studies have however shown that the fixed costs generated by the permanent management of such an internal service are often higher than those entailed by the use of external advice; It is also true that the said internal departments fulfill other useful missions, for example when negotiating licenses and that they are increasingly using outsourcing, in all areas of management.

The fact remains that the use of external advice, to justify it appearing in the eyes of some applicants, involves invoicing which increases the cost of filing the mark.

However, it should be recognized that this billing is relatively modest in comparison with the costs of creating and launching advertising for a new brand.

Be that as it may, we have seen that the preparation of a trademark registration application is an operation of a certain technicality which generates a cost, including official fees collected by national or international authorities responsible for examining applications for registration.

It is therefore advisable to remedy these drawbacks and to offer depositors new means to facilitate their procedures and reduce their expenses.

The present invention has precisely this double objective and relates to a method as defined in the first paragraph of this description, which is characterized in that it comprises the following steps, carried out on the local computer:

(i) seizure of the mark,

(ii) selection of the products or services to which the brand applies, (iii) validation of data entry and selection,

(iv) sending the validated entry and selection to the remote computer via the computer network, said steps being carried out in the order indicated. It is thus easier to prepare a trademark registration request file and the file is quickly transmitted to the remote computer for action.

This remote computer can be installed on the premises of a member of the National Company of Industrial Property Attorneys or on the premises of an IT company.

According to a particular embodiment of the invention, at least one step is implemented by cooperation between the local computer and the remote computer.

This cooperation makes it possible to use the process interactively or by sharing resources computer computers; the local computer can also be a terminal, the computer resources then being concentrated on the remote computer.

According to another particular embodiment of the invention, the validated entry and selection are retransmitted from the remote computer to another remote computer, by electronic messaging.

It is thus possible to send by e-mail to another remote computer a message allowing the file on the request to be continued.

This other remote computer can be installed on the premises of a member of the National Company of Industrial Property.

Advantageously, the entry step comprises the operation consisting in scanning the model of the mark.

This provision is useful when the mark is figurative or semi-figurative.

Preferably, the sending step comprises the transmission to the remote computer of the model of the scanned mark, by the computer network.

Thus, the remote computer receives the information on the figuration of the mark; one can also provide for the retransmission of the remote computer to a second remote computer of the model of the scanned brand, by electronic messaging.

According to a particular embodiment, the selection step comprises the choice of the title of at least one official class of goods or services and the display of the corresponding number of the class. It is thus possible to select as a whole one or more official class (es) of products or services.

According to another particular embodiment, the selection step comprises the choice of at least one number of a official class of goods or services and the display of the corresponding title of the class.

It is thus possible to select an official class directly by its number. According to another preferred embodiment of the invention, the selection step comprises:

(i) entering at least one freely chosen label, (ii) comparing said freely chosen label with potential labels contained in a file, (iii) displaying, following said comparison, one or more labels (s) proposed among the potential labels, (iv) the selection of at least one label from the proposed label (s), (v) the display of the number of the corresponding official class to the selected label (s). The selection of products or services is thus easier, as is the determination of the official class corresponding to the selected wording (s) and corresponding numbers of the class (es).

Preferably, the file includes the labels of the official classification of marks and the class number corresponding to each label.

Thus, the wordings selected will in principle be accepted by the authorities responsible for examining requests for registration of marks.

Advantageously, the file also includes additional labels not appearing in the official classification of marks and the class number corresponding to each of these additional labels. It is thus possible to have additional labels introduced into the file and corresponding to specific or new products or services, or which it is reasonable to believe will be introduced in the international classification of products or services for the purposes of registration. brands.

Advantageously, the selection step comprises the implementation of comparison software, this software making it possible to display a proposed wording identical to the freely chosen wording or a proposed wording including the freely chosen wording or a proposed wording synonymous with the freely wording chosen or one or the other of the above choices optionally or sequentially.

It is thus possible to refine or widen the choice of the proposed labels.

The invention can be implemented in different ways, some of which are exemplified below.

An operator proposes to prepare a trademark registration request. It is assumed that the operator is the depositor.

This description also relates to the case where the depositor is a legal person represented by the operator, which can for example be an employee, and also relates to the case where the depositor is another person or a plurality of natural and / or legal persons, represented by the operator.

The latter has a local computer capable of being connected to a remote computer by a computer network of the Internet type, this local computer being connected to a scanner.

The remote computer includes a file containing the descriptions of the international classification of goods and services for the purposes of trademark registration, the title of the official classes and the number corresponding to each wording and to each class; the file also contains additional labels not appearing in the above classification and the class corresponding to each of these additional labels; these additional labels were introduced into the file, for example by the industrial property attorney of the depositor.

This description also applies to the use of other computer, telematic, radio, cable networks, the term network being used in its widest sense, including for satellite transmissions or for local or internal loops in organizations or to businesses. The user connects to the remote computer and proceeds to identify it by entering a username and password.

When the username and password are validated, the user accesses a user account. This user account can have the necessary information on the identity of the depositor: surname, first name, address, nationality ..., company name, legal form, head office address, as well as other useful information for the registration request, such as for example the color of the mark, but this information may be communicated in an earlier or later phase.

Some non-limiting examples of the implementation of the process which is the subject of the invention are given below. First example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE". He selects the following title: "vehicles, apparatus for locomotion by land, air or water", and the corresponding number of the class is displayed: "12".

This selection step includes the implementation of a software allowing to display the titles of the official classes and their number.

The operator validates the entry and selection and sends the validated entry and selection to the remote computer. The steps of the method are implemented by cooperation, via the computer network, between the local computer and the remote computer.

Second example: during the input step above, the operator scans the model of the mark to be deposited, and during the sending step, it transmits to the remote computer the model of the scanned mark.

The steps of the method are implemented by cooperation, via the computer network, between the local computer and the remote computer. Third example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE".

He selects the number "12" of an official class of goods or services, and the corresponding title, namely "vehicles, apparatus for locomotion by land, air or water" is displayed.

This selection step includes the implementation of a software allowing to display the numbers of the official classes, and their titles.

Fourth example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE".

Then he enters a freely chosen wording of products or services, which is intended to be designated by the brand, for example: "TRUCKS".

The following proposed wording is displayed: "TRUCKS".

Note that this wording is identical to that chosen by the operator.

This selects the proposed label, and the class number "12" corresponding to the selected label is displayed.

This selection step includes the implementation of comparison software making it possible to display a proposed wording identical to the freely chosen wording. The operator validates the entry and selection and sends the validated entry and selection to the remote computer.

The steps of the method are implemented by cooperation, via the computer network, between the local computer and the remote computer.

Fifth example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE". Then he enters a freely chosen wording of products or services, which is intended to be designated by the mark, for example: "TRUCKS". The following proposed labels are displayed: "TRUCK BUCKETS, TRUCKS".

Note that the proposed labels include the freely chosen label. The operator selects the label "TRUCK DUMP", and the number of the official class is displayed, ie "12".

This selection step includes the implementation of comparison software making it possible to display the proposed labels including the freely chosen label. The operator validates the entry and selection and sends the validated entry and selection to the remote computer.

Sixth example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE". Then he enters a freely chosen wording of products or services, which is intended to be designated by the brand, for example: "TRUCKS".

The following proposed labels are displayed: "TRUCK BUCKETS, PICKUP TRUCKS, TRUCKS, TRUCK". It should be noted that the proposed labels include the freely chosen label, in the singular and in the plural.

This selection step includes the implementation of a comparison software allowing to display the proposed labels including in the singular and in the plural the freely chosen label.

The operator selects the labels "TRUCKS, PICK-UP TRUCKS", and the numbers of the official classes are displayed, respectively "12, 12, 39". The operator validates the entry and selection and sends the validated entry and selection to the remote computer.

Seventh example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE".

The following proposed labels are displayed: "TRUCK BUCKETS, PICKUP TRUCKS, TRUCKS, TRUCK, TRUCK REPAIR".

Note that the proposed wordings include the freely chosen wording, in the singular, and the additional wording "REPAIR OF TRUCKS", which does not appear in the international classification of marks.

This selection step includes the implementation of comparison software making it possible to display the proposed labels including in the singular and plural the freely chosen label, the proposed labels being taken from the labels of the international classification of brands and from additional labels.

The operator selects the labels "TRUCKS, REPAIR OF TRUCKS", and the official class numbers are displayed, respectively "12, 37". The operator validates the entry and selection and sends the validated entry and selection to the remote computer. The steps of the method are implemented by cooperation, via the computer network, between the local computer and the remote computer.

Eighth example: the operator performs the steps below in the order indicated.

He enters the mark to be deposited, for example: "LOGOPOLE".

The following proposed labels are displayed: "TRUCK TIPPERS, PICKUP TRUCKS, TRUCKS, TRUCK, TRUCK REPAIR, HEAVYWEIGHT, VEHICLES".

Note that the proposed labels include the freely chosen label, singular and plural, and additional labels "REPAIR OF TRUCKS, HEAVY VEHICLES, VEHICLES".

The label "HEAVY WEIGHT" is a synonym for "TRUCKS"; the wording "VEHICLES" is conceptually more general than that of "TRUCKS".

This selection step includes the implementation of comparison software making it possible to display the proposed labels including in the singular and plural the freely chosen label, the proposed labels being taken from the labels of the international classification of brands and from additional labels, and including labels proposed synonymous with the freely chosen label.

The operator selects the labels "VEHICLES, REPAIR OF TRUCKS", and the official class numbers are displayed, respectively "12, 37".

The steps of the method are implemented by cooperation, via the computer network, between the local computer and the remote computer. The operator validates the entry and selection and sends the validated entry and selection to the remote computer.

Ninth example: in this case, it is the local computer which contains the file of descriptions of the international classification of goods and services for the purposes of trademark registration, the title of the official classes and the number corresponding to each description and to each class; the file also contains additional descriptions not appearing in the international classification of marks and the class number corresponding to each of these additional descriptions.

Alternatively, the local computer has information already possibly contained in the operator's user account.

The previous examples can be reproduced and in this case the operator, after confirming the entry and selection, sends the validated entry and selection to the remote computer. Note that the connection to the remote computer can take place at any time before sending the validated entry and selection.

According to a variant, the user retransmits to the remote computer information contained in the user account, which completes the file for preparing the trademark registration request.

According to another variant of each of the preceding examples, the remote computer is capable of transmitting messages by electronic mail to a second remote computer; it is thus possible to retransmit the validated entry and selection to the second computer, as well as the information contained in the user account _; when this information, accompanied by validated entry and selection, is sufficient, the filing preparation file is complete; it may then be useful for it to be reviewed by a member of the National Company of Industrial Property Attorneys.

This is facilitated when the remote computer or the second remote computer is installed on board premises.

Claims

1. Method for preparing a trademark registration request, by means of a local computer capable of being connected to a remote computer by a computer network of the Internet type, characterized in that it comprises the following steps, carried out on the local computer:

(i) seizure of the mark,

(ii) selection of products or services to which the brand applies,

(iii) validation of the input and selection, (iv) sending of the input and selection validated to the remote computer via the computer network, said steps being carried out in the order indicated.

2. Method according to claim 1, characterized in that at least one step is implemented by cooperation between the local computer and the remote computer.

3. Method according to claims 1 or 2, characterized in that the validated entry and selection are retransmitted from the remote computer to another remote computer, by electronic mail.

4. Method according to any one of claims 1 to 3, characterized in that the input step comprises the operation consisting in scanning the model of the mark.

5. Method according to claim 4, characterized in that the sending step comprises the transmission to the remote computer of the model of the scanned mark, by the computer network.

6. Method according to any one of claims 1 to 5, characterized in that the selection step comprises the choice of the title of at least one official class of goods or services and the display of the corresponding number of the class.

7. Method according to any one of claims 1 to 5, characterized in that the selection step comprises the choice of at least one number of an official class of goods or services and the display of the corresponding title of style.

8. Method according to any one of claims 1 to 5, characterized in that the selection step comprises:

(i) entering at least one freely chosen label, (ii) comparing said freely chosen label with potential labels contained in a file, (iii) displaying, following said comparison, one or more labels (s) proposed among the potential labels,

(iv) the selection of at least one label from the proposed label (s), (v) the display of the number of the official class corresponding to the selected label (s) .

9. Method according to claim 8, characterized in that the file includes the descriptions of the official classification of marks and the class number corresponding to each description.

10. Method according to claim 9, characterized in that the file also includes additional labels not appearing in the official classification of marks and the class number corresponding to each of these additional labels.

11. Method according to any one of claims 8 to 10, characterized in that the selection step comprises the implementation of comparison software, this software making it possible to display a proposed wording identical to the freely chosen wording .

12. Method according to claim 11, characterized in that the comparison software makes it possible to display a proposed wording including the freely chosen wording.

13. Method according to claim 12, characterized in that the comparison software makes it possible to display a proposed wording synonymous with the freely chosen wording.