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Registering a trademark is a right of occupancy on a « first-come, first-served » basis.
Nonetheless, trademark registration must meet a strict condition of distinctiveness, which is assessed in relation to the designated goods and services: first of all, the chosen sign has to be arbitrary. Furthermore, it must not be necessary, descriptive, generic, of common use or misleading in relation to the designated goods and services.
In addition, the trademark must not infringe on third parties’ prior rights.
If a trade mark is created ex nihilo, the applicant must check the availability of the sign before filing: in the presence of similar signs in an identical or similar sector of activity, the risk of opposition from third parties is likely to slow down or even stop the registration. The applicant will then be obliged to start the search from the beginning.
The Offices may also raise objections concerning the distinctiveness of the sign: this will have the same consequences in terms of duration and outcome of the registration procedure.
Trademarks are governed by the principle of speciality. As a result, they are registered in one or more classes and must designate one or more goods and/or services.
The Nice Classification in force in the European Union (EU), among others, consists of 45 classes:
Each class has a class heading. This provides general information on the type of goods or services covered:
The number of trademarks registered worldwide is constantly increasing.
In France, 106,000 trademarks were registered with the INPI (National Intellectual Property Office) in 2020. This figure has been increasing for the past five years and is 7.2% higher than in 2019.
In its consolidated annual activity report, the EUIPO (European Intellectual Property Office) states that it received in 2020 more than 175,000 trademark applications. This figure represents a 10% increase over 2019. Almost 15,000 trademark applications were filed per month in 23 languages, coming from users in 200 countries and regions of the world. In 2021, nearly 200,000 trademarks were filed with the EUIPO, twice as many as in 2010.
The WIPO (World Intellectual Property Organisation) report published in November 2021 states that the number of trademark registrations worldwide exploded in 2020. It reached 13.5 million applications.
This growth was felt in 16 of the top 20 offices: the EUIPO ranks fourth behind China, the US and Iran.
Statistics published by the EUIPO for 2018-2020 show that the more frequently filed classes at European level are:
Class 3
Perfumes and cosmetics
Class 5
Medicines, pharmaceutical and veterinary products
Class 9
Scientific, photographic and cinematographic apparatus and instruments, computers and software
Class 16
Printing products, instructional or teaching materials, photographic prints
Class 25
Clothing, shoes, headgear
Class 28
Games, toys, video games, gym and sports equipment
Classes 30 & 31
Food products
Classes 32 & 33
Alcoholic or non-alcoholic beverages
Class 35
Advertising, business administration
Class 36
Insurance services, financial affairs, real estate affairs
Class 41
Education, training, entertainment, sports and cultural activities
Class 42
Scientific and technological services, design and development of computers and software
Today, the INPI database contains 5.2 million registrations. Excluding expired trademarks, there are for example almost 107,000 trademarks registered at INPI in class 3. In addition, there are 92,000 trademarks registered in class 5, more than 150,000 in class 25 and almost 107,000 in class 36.
Between 20% and 30% of these trademarks are not used. Some trademarks have never been used. This is because the companies that own the trademarks have either decided not to launch certain products or services or have chosen to market them under another trademark. Other trademarks have been put in use but are no longer used. This may be because the companies that registered them have ceased trading or are no longer marketing the products and services associated with those trademarks.
The number of registrations in force worldwide is currently close to 65 million trademarks.
Trademarks are registered for 10 years and are renewable indefinitely. As a result, the large increase in filings contributes to the clogging of the registers every year. This makes it very difficult for new applicants.
This is why TradeYourMark® considers dormant trademark stocks as a great potential for its clients.
When the owner of a trademark still exploits it, the valuation relies on objective criteria such as those defined the ISO 10668 standard. For dormant trademarks, the valuation is more complex as there are no defined written rules. In both cases, TradeYourMark ® brings its expertise and experience to its clients.
A first way to value a dormant trademark is the cost a company would have to incur to create a new trademark : naming agency costs and registration costs. Under this methodology, the cost of a dormant trademark would be around 6,000 to 10,000 euros.
However, in many cases, the value of a dormant trademark depends mainly on the demand. For the buyer, the value of a dormant trademark could depend on criteria such:
