Trademarks

Trademarks
Patents
Designs/copyright
Contracts
software
Infringement
Mediation and arbitration
Strategy

Protect your trademarks

«What do I have to do to protect the name of my new product ?»

We offer strategic advice on developing your patent portfolio and measuring its value, in particular by means of audits and due diligence, and on any contractual transactions associated with your rights. We ensure that the legal protection offered by your property rights is consistent with the way in which they are used commercially.

We analyse your sign (name, slogan, logo, numbers, etc.) in order to check that it is registrable. We analyse your existing trademark portfolio in order to propose a protection strategy that meets your requirements.

We carry out an identical or a complete prior rights search in order to detect any prior rights which could prevent your planned trademark from being successful.

We file your trademark application at the French, European, international or foreign trademark offices. We monitor the examination procedure and prepare the responses to any objections raised by the relevant offices. We then set up a trademark search in order to detect any application filed by a third party which could prejudice your rights so as to enable you to react.

Where infringement proceedings have already been commenced in the courts, whether you are a claimant or a defendant, we evaluate your chances of success or risks of being found liable and help you to put together a strategy of attack or defence. We guide you towards reaching a settlement agreement if that is beneficial to your interests.

Prior rights search

«I have developed a trademark but would like to be certain that it is available before filing it. How can this be done?»

A search of prior rights enables us to check that your proposed trademark does not infringe pre-existing third-party rights.

We conduct a search in order to detect any prior rights which could prevent the use of your planned trademark, design, or domain name.

We provide you with a detailed report identifying existing rights which are liable to cause difficulties, and we propose options in case of potential conflicts (including use investigations, requests for negotiations, consent, etc).

Validity opinion

«How can I found out how robust my patent is before I enforce it against a third party?»

Are you wondering whether your sign can be protected as a trademark?

Before filing a trademark application, we review the proposed sign and determine whether we believe that it is valid and enforceable as a trademark in France and in the European Union.

Can your sign be represented graphically? Is it lawful, available and distinctive?

Our answers to these questions will enable you to decide whether, from a legal perspective, a filing would be appropriate or not.

Trademark monitoring

«How can I detect a possible infringement of my trademark?»

By putting in place trademark monitoring to identify conflicting trademark applications filed by third parties.

Once your trademark is filed, we offer monitoring services in order to detect any new third-party filing that could interfere with your rights, and to enable you to react.

For example, as the French trademark office does not alert proprietors of earlier trademarks to newly filed trademarks that are identical or similar, this monitoring is an effective means of finding out about these problematic filings in France.

We will alert you about any such filings and will let you know our opinion on what actions need to be undertaken worldwide, in particular in respect of filing oppositions.

Trademark oppositions

«I have been made aware of the publication of a trademark that is very similar to mine and was filed by a third party. What should I do?»

In many countries, it is possible to lodge an opposition against the registration of a subsequent trademark if it creates a likelihood of confusion with your rights.

We take action against third parties which infringe your rights, in particular by filing oppositions in any countries where such proceedings exist.

We proceed in three stages:

  • Prior to that, we conduct investigation to ascertain the opposing party does not have rights that pre-dates yours.
  • We prepare and file a complete set of arguments to contest the validity of the trademark application on the basis of an analysis of the signs and of the goods and/or services in question.
  • After that, we monitor the proceedings, study Offices’ decisions and, where appropriate, advise on the opportunity of filing appeal proceedings.

Domain names

« What is the purpose of the protection provided by a domain name? »

Registering a trademark as a domain name enables you to exploit your product on the internet and to prevent third parties from registering and using it without your consent.

We register for you all kinds of domain names in all existing zones, generic (.com, .info, .net, etc.) or geographical (.fr, .de, .uk, etc.).

We monitor deadlines associated with the registration of your domain name and manage the renewal fees.

In case of a conflict with a third party, we prepare, file and monitor complaints lodged with arbitration bodies (such as Afnic for domain names ‘.fr’, WIPO for domain names ‘.com’) or competent authorities in foreign countries (such as the CIETAC – China International Economic and Trade Arbitration Commission – and the ODRC – Online Dispute Resolution Center – for domain names with ‘.cn’).

We also advise you on a strategy for the development of your portfolio of IP rights and on the valuation of your intangible assets, in particular through audits, due diligence and any contractual transaction associated with your IP rights.