ats.renaissance becomes chantal.ats
It was with joy and full of energy that I informed you last June that I had adopted for my activity the new name of "BIRTHDAYS". I wrote to you when I was reached the point where I wanted to give a new dimension to my activity ". I come today to announce with great sadness, disappointment and frustration that I have been forced to make the decision to limit the use of this name.
And yet it is not for lack of having made this change of name in the rules. I registered it with the Chamber of Trades and I filed a trademark application with the National Institute of Industrial Property (INPI). It should be noted that the INPI is a public establishment of an entirely self-financed administrative nature. Of course, these steps cost me money.
Still, after filing this application for trademark registration, I quickly received a letter from a large French law firm specializing in the validation of trademarks, which put me on notice to abandon the name " BIRTHDAYS". This firm represents a doctor affiliated with a large group that develops, produces and markets a large number of beauty and cosmetic products. Among all these products there are five that include the common name “renaissance” in their name.
This law firm lets me know that the word " reborne” belongs to their client. Imagine, a common name is actually owned by a private for-profit company! The firm argued that there was a similarity between the doctor's products and the hair salon services that I provide.
I decide to defend myself and seek the help of a lawyer specializing in intellectual property law, knowing full well that it is an iron pot against an earthen pot. The lawyer and myself note that over the past thirteen years, in the name of this doctor, this law firm has regularly given formal notice to new companies which, registered with the INPI, used, alone or included in a set, the word "rebirth" as a logo. It should be noted that in its judgments, each time, the INPI gave a favorable opinion to this law firm in favor of its client.
By mutual agreement, the lawyer and I, and despite the little chance of achieving our ends, decide to pursue the action. For me it was about defending what I was creating: BIRTHDAYS ". There was no question of giving up and giving up a part of myself, even if I knew that the chances of success were very low. In my soul and conscience I had to do everything I could to defend what I am. It was a matter of integrity. I took over the motto of Guillaume d'Orange on my account
« It is not necessary to hope to undertake nor to succeed to persevere. »
Our argument was based on the one hand on the fact that, unlike this doctor, I do not develop or manufacture any cosmetic and beauty products. My activity boils down to providing services. There is therefore no similarity or complementarity between this doctor's products and my service offer. On the other hand we underlined the fact that the name of the five products of the doctor included the only word "rebirth" whereas my brand is made up of a word " ATS " in attack position to which is attached the term " REBIRTHto form an acronym. The three leading letters " ATS corresponding to the initial as well as the consonants of the medium and the end of my surname. This addition of the word "ATS» in the word « REBIRTH » having the effect of strongly attenuating the perception of the term «REBIRTH“, actually leaving him in second place. Under these conditions, we argued that it was not possible to conclude that there was a conceptual similarity between the signs of the two marks.
On the basis of these arguments, we concluded that the lack of similarity between the doctor's products and my services, combined with the very low similarity between the signs of the two brands, eliminated any risk of confusion in the minds of the public. As a result of which we asked the INPI that the opposition formulated on behalf of the doctor by the law firm be rejected.
Some time after receiving our argument, the INPI informed us that it had decided that the opposition formulated by the legal firm on behalf of the doctor was justified and that my application for registration of the mark " BIRTHDAYS was partially rejected. The INPI justified this decision on the fact, and I quote, that " The goods and services of the registration application object of the opposition are identical and/or similar to certain goods of the earlier mark », and that at the level of the signs « The contested registration application constitutes an imitation of the earlier mark, of which it appears as a variation ».
Deeply shocked and saddened by this decision of the INPI, it was necessary for us, the lawyer and me, to decide on the follow-up to be given to this case. Two possible alternatives: to sue and end up in court even if it means having damages to pay to the opponents or to submit to us and renounce at least partially the name " BIRTHDAYS ". It should be noted that in this type of litigation, the courts mostly base their verdict in accordance with the decisions of the INPI. We were able to verify that this was the case in the disputes between the doctor and new custodians of trademarks using the word " Renaissance ».
The costs already incurred plus those potentially necessary for the prosecution of the case and the almost non-existent chances of obtaining a verdict in our favor, have decided us not to pursue.
As I have checked and as you can easily check thanks to the Internet, in many French cities there is a hairdressing or beauty salon called " Renaissance or a compound of that name. How is this possible after what I have just experienced? It is quite simply that these companies did not consider it necessary to go through the INPI. Why did I want to go through the INPI and go so far as to spend money to follow this process? Because I wanted to do things honestly and within the rules. It took me badly.
As you can imagine, in addition to the money spent, I spent a lot of time and energy on this case. As with any lived experience, especially if it tastes somewhat bitter, it is good to learn from it. On the one hand so as not to make the same mistake twice and also to inform those who embark on this path and prevent them from making the same mistakes.
First of all, I think it is essential before filing a trademark application with the INPI to consult a lawyer. Which I unfortunately didn't do. It was only when I had to defend myself that I sought the help of a lawyer. Those I consulted all informed me that if I had seen them before filing, they would have advised me not to file a trademark application with the INPI. This is what they advise in ninety percent of the cases submitted to them.
This is partly explained by the fact that, as I wrote at the beginning of this news, the INPI is a public establishment of an entirely self-financed administrative nature. Is it not difficult to be on the one hand a public institution which by definition is there for the good of the community, and on the other hand to be self-financed, that is to say to obtain its income from services and services that we market? Aren't these two incentive systems that have no a priori reason to operate according to the same logic? In the first system, we are in the case of a public establishment which operates to carry out a mission of general interest. In the second system, we are in the case of an establishment which finances itself by selling its services. Can the general interest really be served by an establishment which derives its income from the sale of its services? I doubt. A situation that is all the more problematic as this same public institution has the power to rule and make decisions that have a decisive influence on subsequent decisions of the courts.
In the concrete case that concerns us, the public institution had a strong incentive to sell me a service (application for registration of my trademark), to contribute to its self-financing. Without this preventing him from making a decision that went against the service he had sold me. By the same token does the INPI not become judge and party? This is a question that I ask myself and I ask you.
Result: There are legal establishments that partly live from this confusion and this institutional contradiction. They work for established and powerful companies which thereby regularly manage to grant themselves rights even to the common names of our language. This has the effect that, as lawyers advise nine times out of ten, the majority of new entrepreneurs do not file their trademark with the INPI. A situation that maintains vagueness and arbitrariness. This case will have cost me a lot of time, energy and resources, not to mention fatigue and stress. So many resources that should have been devoted to the development of my independent professional activity.