Until the end of 2019, it was possible to file a new trademark application associated with the early renewal of another trademark in order to adapt one’s trademark to new features.
To our knowledge, this specific procedure did not exist in any country but in France.
The procedure was mostly used to protect new logos of already registered trademarks. You could indeed associate a new trademark application for the new logo to the early renewal of the trademark corresponding to the older logo. You could as well file the new trademark application for a new list of goods and services, and associate the new application to the early renewal of an older trademark covering an older list of goods and services.
It was a very effective way of adapting one’s trademark registration to a new graphic identity and/or to new activities, whilst securing the seniority attached to the oldest trademark.
And it was cost-efficient as well since, in the long term, associated trademarks were to be renewed simultaneously by paying mutualised official fees.
This specific procedure was abrogated by the latest reform of French trademark law (here).
There are two main consequences.
1.
For French trademarks previously associated with one another, there is no financial incentive anymore.
It is still possible to renew simultaneously two previously associated trademarks, but it equals to two renewals and official fees must be paid for both renewals as if separately.
Decisions to renew only one trademark or two associated trademarks would then depend on several factors, such as the seniority attached to the older trademark, the way the mark is currently used, the relevance of the lists of goods and services, the logo currently used, etc.
2.
Because of the abrogation of this specific system, it would be unsafe not to register both the verbal version of one’s trademark and its figurative version.
This way, in case one’s logo is modified, the verbal sign would still be protected on its own, and there would not be any interest in renewing a logo that is not used any longer.
As always, INSCRIPTA remains at your side to implement the proper strategy.
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