Article written by Sara Berrady – Senior IP Consultant & Associate at H&H IP LAW
TRADENAME VS TRADEMARK
Although the terms TRADENAME and TRADEMARK may appear Indistinguishable, it is substantial for business owners, particularly those in the initial startup phase of their venture, to understand the differences. adopting and registering TRADENAME and TRADEMARK is an important part of newborn businesses to be perfectly positioned in the marketplace, both notions are relative and complementary, thus it’s a process that should be carefully examined.
The law distinguishes between the two: a TRADENAME relates to a company’s official name, but a TRADEMARK provides legal protection to a company’s brand and image.
According to the Moroccan law provisions, the TRADENAME is supporting the brand protection, which means that, it’s possible to challenge a TRADEMARK infringement act based on TRADENAME prior existence and registration.
Ultimately, we can assume that the TRADENAME registration provides a large protection to the brands issues and in the context of invalidation & assign-back court actions, hereunder summary of one of the successful cases conducted by our firm H&H IP LAW in accordance with the Moroccan laws:
Benefits cosmetics vs A.S :
• Physical Third party called A.S filed conflicting brand registration identical to benefits’ brands before the Trademark Moroccan office,
• The company Benefit Cosmetics did not have any registration of their brand benefit in Morocco,
• Benefit Cosmetics obtained favorable verdict based on TRADENAME protection and through the presentation of the company’ commercial registry which proved the bad faith of the opponent based on the earlier establishment of the company which has been created before the date of the conflicting brand registration.
A TRADENAME is the formal name under which an individual as a sole proprietor or a company selects to start a new business. Registering a TRADENAME in legal way is an important phase in branding for a company,
A “TRADENAME” shall be understood as the distinctive appellation or sign under which an enterprise is operated.
Names or designations which, by their nature or the use that may be made thereof, are contrary to morality and public order or are liable to deceive trade circles or the public as to the nature of the enterprise identified by that name, may not constitute TRADENAME.
Whether or not they are part of a mark, TRADENAMES shall be protected by the provisions of Law No. 15-95 constituting the Code of Commerce against any subsequent use of the trade names by a third party, be it in the form of a trade name or factory mark, TRADEMARK or service mark, if this could confuse the public.
Although registering a TRADENAME doesn’t provide legal protection in the way that registering a TRADEMARK does, choosing a TRADENAME should still be done thoughtfully. That’s because it’s the initial step in establishing an identity for a company in the marketplace. As indicated earlier, registering a TRADENAME doesn’t give a TRADEMARK right—both processes are separated and conducted before different entities.
A TRADEMARK is a more significant step identified with establishing brand recognition in the marketplace. A TRADEMARK can be associated with or it can be part of your TRADENAME and can be used to provide legal protection for the use of names, logos, symbols, or company slogans. Two easily recognized examples of TRADEMARKS are adidas’s 3 bars logo and Coke’s « Coca-Cola » written in its distinctive script. TRADEMARKS are easily recognized as they are accompanied by the TRADEMARK symbol—™.
It shall be unlawful to adopt signs infringing prior marks, in particular:
(a) an earlier mark registered or well known as defined by Article 6(a) of the Paris Convention for the Protection of Industrial Property;
(b) a name or company name, if this could create confusion in the mind of the public;
(c) a trade name or brand name known throughout the national territory, if this could create confusion in the mind of the public;
(d) a protected appellation of origin;
(e) the rights protected by the Law concerning the Protection of Literary and Artistic Works;
(f) the rights deriving from a protected industrial design;
(g) the rights relating to the personality of a third party, in particular his patronymic name, pseudonym or image;
(h) the name, image or repute of a local administrative unit.
A TRADEMARK requires a separate registration from a TRADENAME, and this must be done at the TRADEMARK Moroccan office. The registration of a TRADEMARKS guarantees an individual or business the exclusive use of the TRADEMARK, establishes legally that the same was not already being used by any other business entity prior to your registration of it, and provides official government protection from any other business subsequently infringing on a registered TRADEMARK. It also provides legal liability protection against someone subsequently claiming that you are infringing on a previously registered TRADEMARK.