Protecting a company's intangible assets: trade mark, creations, know-how

The value of a company no longer lies only in its walls, its machines or its cash. A name that inspires confidence, a recognisable logo, software developed in-house, a recipe, a sales method, a customer file: these invisible elements are often the most valuable part of the estate, and yet many business owners protect them only after a dispute. A competitor who registers your name before you, a former employee who leaves with your processes, a service provider who claims ownership of the website it coded: these are all situations that are costly and that can be prevented in advance. This guide explains, for the head of an SME or a mid-sized company (ETI), how to identify its intangible assets, choose the right protection tool and secure ownership of the rights. It lays the foundations of intellectual property law, ahead of the questions of unfair competition, free-riding (parasitisme) and confidentiality agreements, which call for separate analyses.

Understanding what intangible assets cover

Intangible assets means all of the company's wealth that has no physical substance but has real economic value. They include the trade mark, creations protected by copyright (software, texts, visuals, photographs), designs, technical inventions, but also know-how, databases and reputation.

Not all of these elements fall under the same legal regime. French intellectual property law, codified in the French Intellectual Property Code (CPI), distinguishes two broad families. First, industrial property, which in principle requires registration with the French National Institute of Industrial Property (INPI): trade marks, patents, designs. Second, literary and artistic property, essentially copyright, which protects works of the mind without any formality, from the moment of their creation.

This distinction is decisive. For a trade mark or a patent, the absence of registration deprives the company of protection: the right arises from registration. For an original creation, protection exists from the moment the work takes shape, but one must still be able to prove the date and ownership in the event of a challenge. A well-advised business owner therefore reasons asset by asset, asking three questions: what do I want to protect, which legal tool applies, and who actually owns it.

Why map your assets before acting

Before any filing, an inventory is needed. It involves listing the distinctive signs (trade name, trade mark, domain name, logo), the creations (website, software, catalogue, brochures, photographs), the technical elements (processes, formulas) and the confidential information with commercial value (files, methods, pricing data).

This mapping reveals the weak points. A small building company that has used its name for years without registering it often discovers, on this occasion, that a third party could register it in its place. A communications agency realises that the source code of the websites delivered to its clients may still belong to a freelance developer for lack of a written assignment. Identifying these gaps is the first act of protection.

Protecting the company's trade mark

A trade mark is the sign that distinguishes a company's goods or services from those of its competitors. It is the first useful reflex when seeking to protect a company's trade mark, because a name used without registration remains legally fragile.

What a trade mark is in law

Article L. 711-1 of the CPI defines a trade mark as a sign serving to distinguish the goods or services of a natural or legal person. Since Ordinance No. 2019-1169 of 13 November 2019, which transposed the European "trade mark package", the requirement of graphic representation has disappeared: a trade mark may now consist of a word, a logo, a shape, a colour or even a sound, provided it can be represented in the register in a clear and precise manner.

The sign must meet three conditions to be validly registered. It must be distinctive, that is, it must not simply describe the product (the word "Bakery" cannot be appropriated by a baker). It must be available, and so must not reproduce an earlier sign for identical or similar goods or services. Finally, it must be lawful, that is, neither misleading nor contrary to public policy.

Filing with the INPI, step by step

Filing is done online with the INPI. Two choices shape the application.

• The classes of goods and services: the international Nice Classification divides goods and services into categories. The trade mark is protected only for the classes designated. A restaurateur who registers its trade mark in the catering class does not automatically protect it for food products sold in supermarkets.
• The territory: an INPI filing is valid only in France. To cover the European Union, the European Union trade mark is obtained from the EUIPO (European Union Intellectual Property Office), under Regulation (EU) 2017/1001. To cover other countries, the Madrid system administered by WIPO (World Intellectual Property Organization) allows international extension.

A prior rights search is needed before any filing. The INPI does not examine of its own motion identical or similar trade marks already registered: it is for the applicant to check availability, failing which it is exposed to opposition, or even an action for invalidity. This check covers not only trade marks but also earlier company names, trade names and domain names. Prior rights searches, geographical protection strategy and the definition of goods and services are set out in our guide to the steps for filing a trade mark.

Duration, renewal and monitoring

Registration takes effect for ten years, renewable indefinitely for periods of ten years. Unlike a patent, a well-maintained trade mark can therefore protect an asset without any time limit.

Two practical obligations go with a trade mark. The first concerns use: a trade mark that is not used for an uninterrupted period of five years may be revoked at the request of a third party. The second concerns active monitoring: filing is not enough, one must also detect later filings liable to create confusion. A company that lets a similar sign settle in for years weakens its ability to react. Putting a watch in place and filing an opposition within the time limits is an integral part of protection.

Protecting creations: copyright, designs

Beyond the name, the company produces creations that have their own regime.

Copyright, protection without formality

Copyright protects original works of the mind, without filing or registration. Under Article L. 111-1 of the CPI:

The author of a work of the mind enjoys in that work, by the sole fact of its creation, an exclusive incorporeal property right enforceable against all.

The central criterion is originality, understood as the imprint of the author's personality. A website, software, catalogue text, photograph or graphic design may be protected on this basis. Protection lasts for the author's lifetime and seventy years after death, which makes it particularly durable.

The advantage is that it is free and automatic. The difficulty lies in proof: in the event of a dispute, the date of creation and its author must be established. Several reliable tools exist. The Soleau envelope (enveloppe Soleau), offered by the INPI in electronic form, makes it possible to date a creation at low cost. Deposit with a bailiff (huissier), a notary or an authors' society plays the same evidential role. These mechanisms do not create a right, they provide proof of a certain date.

Designs for the appearance of products

Where the value lies in the appearance of a product, its shape, lines, colours and ornamentation, registration of designs with the INPI offers dedicated protection, governed by Articles L. 511-1 et seq. of the CPI. A furniture manufacturer, a lighting designer or a ready-to-wear brand has an interest in protecting its collections in this way.

Protection requires that the creation be new and have individual character. It lasts five years from filing, renewable in blocks up to twenty-five years. Protections can be combined: the same product may fall under copyright, design law and, for its name, trade mark law. Combining these layers strengthens the company's position against an imitator.

The patent, for technical innovations

A patent protects a technical invention that is new, involves an inventive step and is capable of industrial application, under Articles L. 611-10 et seq. of the CPI. It confers a twenty-year exploitation monopoly, in return for public disclosure of the invention.

A patent makes sense only for a technical solution, not for a commercial idea or an abstract method. Its procedure is heavier and more costly than that of a trade mark, and often requires the support of an industrial property adviser (conseil en propriété industrielle). For many innovative SMEs, the choice lies between patenting, which means disclosing everything, and keeping the invention secret, which points to the protection of know-how.

Protecting know-how and confidential information

An important part of a company's value cannot be registered: production methods, processes, formulas, commercial data, supplier lists negotiated over a long period. This know-how is the subject of no title of ownership, but the law gives it specific protection.

The trade secrets regime

Law No. 2018-670 of 30 July 2018, which transposed Directive (EU) 2016/943, introduced into the French Commercial Code a regime for the protection of trade secrets in Articles L. 151-1 et seq. Information is protected if it meets three cumulative conditions: it is not generally known or readily accessible, it has commercial value because of its secret nature, and it is subject to reasonable protective measures on the part of its holder.

This third condition is decisive and often neglected. Legal protection is triggered only if the company has itself taken concrete measures: restricted access, marking of confidential documents, compartmentalisation of sensitive information, suitable contractual clauses. Information left to circulate freely within the company loses the benefit of secrecy. Protecting know-how is therefore as much a matter of internal organisation as of law.

Contractual tools in the service of confidentiality

Confidentiality is secured by clauses inserted in employment contracts, service contracts and relations with partners. Non-disclosure agreements, or NDAs, govern exchanges of sensitive information during negotiations or joint projects. These mechanisms, which call for tailored drafting, supplement the statutory trade secrets regime rather than replace it. Their interaction with non-competition clauses and the employee's duty of loyalty deserves a dedicated examination, separate from the approach by intellectual property title set out here. The legal framework of these agreements, their essential clauses and their limits are dealt with separately in our guide to the confidentiality NDA.

Securing ownership of the rights

Protecting an asset is pointless if the company is not legally its owner. This is one of the most frequent blind spots, and one of the main sources of commercial disputes.

The central question of the creator

The principle is that copyright arises in the person of the natural person who creates the work. Contrary to a widespread belief, paying for a service does not automatically transfer intellectual property rights. A business owner who commissions a logo from an independent graphic designer, a website from an agency, or photographs from a professional, does not acquire ownership of those creations by the mere payment of the invoice.

Transfer requires a written assignment, precise and compliant with the requirements of the CPI. Article L. 131-3 requires that the assignment delimit the rights assigned as to their scope, purpose, place and duration. A vague clause such as "the service provider assigns all its rights" is fragile. The assignment must list the rights transferred (reproduction, representation, adaptation), the media concerned, the territories and the duration.

The particular case of employees

The fate of creations made by employees varies according to their nature. For classic works, the employment contract does not entail automatic assignment of copyright to the employer: an express assignment clause remains necessary, with the same drafting precautions.

Software is an exception. Article L. 113-9 of the CPI provides that the economic rights in software created by an employee in the course of their duties are vested in the employer, unless otherwise stipulated. Likewise, as regards inventions, Article L. 611-7 sets up a particular regime for inventions made in the course of employment (inventions de mission), which belong to the employer subject, where applicable, to financial consideration for the employee. These specific regimes do not remove the need for a clear contractual policy, particularly for creations other than software.

The audit before a transaction

These ownership questions take on particular importance in a fundraising, a sale of a business (fonds de commerce) or an acquisition of a company. The diligent buyer checks that the target does hold the rights in its name, website, software and creations. An incomplete chain of assignments may reduce the valuation, delay the transaction or trigger post-acquisition litigation. Reconstituting missing assignments in advance is better than discovering the flaw under the pressure of a negotiation.

Responding to infringement

Holding protected rights opens avenues of action when a third party infringes them. Infringement (contrefaçon) means interference with an intellectual property right: reproduction of a trade mark, copying of a work, imitation of a registered design. It is distinct from unfair competition and free-riding, which penalise wrongful conduct even in the absence of an exclusive right, on the basis of the civil liability provided for in Article 1240 of the French Civil Code. These two grounds may be combined in the same case, but rest on different logics that call for separate analysis. The definition of economic free-riding and its interaction with unfair competition are set out in our article on free-riding and unfair competition.

An action for infringement may be accompanied by a powerful evidential tool: the infringement seizure (saisie-contrefaçon), authorised by the judge, which makes it possible to have the infringement physically recorded by a bailiff before any proceedings. The penalty may be civil, with compensation for the loss and an injunction to cease exploitation, or criminal.

Before any litigation, a formal notice or a cease-and-desist letter often resolves the dispute, provided the right holder can demonstrate its right and its priority without ambiguity. This is where the quality of the protection put in place in advance pays off: a clean filing, a written assignment of rights and proof of a certain date turn a fragile position into a solid one.

Conclusion

Protecting intangible assets is not limited to a single trade mark filing. It rests on a methodical approach: mapping what the company owns, choosing for each asset the suitable tool (trade mark at the INPI, designs, patent, copyright, trade secrets), and above all locking down ownership through written assignments compliant with the French Intellectual Property Code. The costliest mistake is not forgetting to register a trade mark, it is believing that paying for a service is enough to become its owner.

The position taken in this guide is clear: the legal value of an intangible asset is built before the dispute, never during it. A trade mark filed in the right classes, a service contract containing a precise assignment clause, a Soleau envelope dating a creation, internal measures protecting know-how: these reflexes cost little and avoid long and uncertain litigation. Before any new project involving a creation or an external partner, have your assignment contracts and the state of your filings checked by an adviser: it is this check that, in the event of a conflict, will make the difference between an enforceable right and a mere claim.

Frequently asked questions

Is it compulsory to file a trade mark with the INPI? Filing is not a legal obligation, but it is the only way to acquire an exclusive property right in a name or logo. Without registration, use of a trade name confers limited and fragile protection, and does not prevent a third party from registering an identical sign. Filing with the INPI protects the trade mark in France for ten years, renewable indefinitely, in the classes of goods and services designated.

Does copyright require filing in order to be protected? No. Under Article L. 111-1 of the CPI, the author of an original work enjoys an exclusive right by the sole fact of its creation, without any formality. Deposit (Soleau envelope, bailiff, notary) does not create the right but serves only to prove the date of creation and the identity of the author in the event of a dispute. This proof is strongly recommended for creations with commercial value.

Does paying a service provider make me the owner of the logo or website it created? No, and this is a frequent confusion. Payment for a service does not transfer intellectual property rights. Only a written assignment, specifying the rights assigned, their scope, the media, the territory and the duration in accordance with Article L. 131-3 of the CPI, effects the transfer. In its absence, the service provider remains the holder of the rights in its creation.

How can I protect know-how that cannot be patented? Know-how falls under the trade secrets regime provided for in Articles L. 151-1 et seq. of the French Commercial Code, arising from the Law of 30 July 2018. Protection requires that the information be secret, have commercial value as a result, and be subject to reasonable protective measures: restricted access, marking of documents, confidentiality clauses. Without concrete measures, legal protection does not apply.

What is the difference between infringement and unfair competition? Infringement penalises interference with a registered or protected intellectual property right (trade mark, design, work, patent). Unfair competition and free-riding penalise wrongful conduct on the basis of civil liability (Article 1240 of the French Civil Code), even without an exclusive right, for example imitation creating confusion or riding on the back of another. The two actions may be combined but rest on distinct foundations.

How long does protection last for a trade mark, a design and a patent? A trade mark is protected for ten years, renewable indefinitely for periods of ten years. A design is protected for five years, renewable up to a maximum of twenty-five years. A patent confers a twenty-year monopoly that cannot be renewed, in return for disclosure of the invention. Copyright lasts for the author's lifetime and seventy years after death.

Does a trade mark filed in France protect me abroad? No. An INPI filing has effect only in France. To cover the European Union, a European Union trade mark filed with the EUIPO is required, governed by Regulation (EU) 2017/1001. For other countries, the Madrid system administered by WIPO allows international extension from a basic filing. The territory must be defined according to the markets targeted by the company.