Is trademark filing becoming a reflex at last! All too often did we have, as IP counsels, to explain to a client that he would have been in a much more favorable situation, legally speaking, had he filed his trademark in due course! Celebrities seem to have become largely aware of this, to the point that they are now filing nearly everything - from Nabilla with her famous statement "Allô t’es une fille t’as pas de shampoing non mais allô quoi" (see: http://ip-talk.fr/blog/2013/04/16/tes-une-fille-tas-pas-ta-marque-non-mais-allo-quoi/), through Cristina Cordula and her expressions "Ma chériiiie ! Tu es magnifaïk !", to Serge the Lama!
It is not uncommon for a celebrity to file a trademark to protect his/her own name (Sophie Marceau, Kim Kardashian, or Alain Delon are registered trademarks), with pitfalls to avoid (see: http://ip-talk.eu/2013/07/12/the-ines-de-la-fressange-affair-%cc%b6-a-few-tips-to-avoid-losing-the-right-to-use-your-name/). But celebrities are now going even further, as they tend to also file the expressions that have made them famous and have come out as their "distinctive signs".
The benefits are many. This allows them, for example, to conclude license agreements under which the said expressions can be used to market derivative products, develop side activities in the wake of TV programs, or respond to any unauthorized commercial usage by third parties... Filing a mark certainly gives value to the mark!
This is no doubt a good reflex (all the more so as copyright cannot generally give proper protection against unauthorized use by third parties). However, as should usefully be recalled here, filing a trademark has some limits. The owners will not be able to prevent the non-commercial use of their expressions, in particular by journalists or bloggers who will regularly quote them or use them to make a play on words.
In conclusion, filing a trademark certain is a good move in this context, but applicants should first seek proper advice:
- They should be the first to file the expression: 3 applications were made on November 6, 7 and 10 by 3 different applicants to file the "SERGE LE LAMA" expressions!
Nabilla filed the Nabila expression, but so did the producer!
- They should cover the relevant classes and be able to see the big picture, so as to move from digital to the real world (e.g.: Stephane Plaza's real estate agency; Candi Crush! Candies; etc.)
- They should be careful to file properly. One may question the relevance of Cristina Cordula's filing, as she built a compendium of all her expressions in a single and highly complex filing which finally offers only little protection!
- They should be made aware of the limits.
These expressions are first and foremost echoed, re-used and disseminated through the social networks, so the buzz is a powerful driver in this respect! But things in this context go very rapidly, so that the golden rule is: file fast, but file properly! In fact, if you don't hold the ground in the first place, the fight could be tough and long, and claiming priority won't be an easy task! On October 31 this year, Armor Lux filed the trademark called LES BONNETS ROUGES for clothes, just after an extreme right association had filed BONNETS ROUGES with INPI on October 29, in particular for advertising and telecommunication….. "Bonnet rouge" is a distinctive sign, but the underlying principle for trademarks is that it should be possible to link them to an origin, which is not really the case here…