The trademark lawyer is an essential partner for the implementation of a brand strategy within the company. Our expert trademark lawyers have extensive experience in trademark advice and litigation.
In particular, we are called upon to advise and defend our clients in the context of administrative proceedings before the National Institute of Industrial Property (INPI), the European Union Intellectual Property Office (EUIPO) or the World Organization for intellectual property (WIPO). Our lawyers also intervene in infringement actions before the civil courts.
Assistance and recommendations by a trademark lawyer
A trademark is a distinctive sign that allows a company to identify its products and/or services and to differentiate them from those of its competitors. The choice of a trademark is not enough, it is also necessary to ensure its protection in the countries in which the company plans to operate it and to protect it against infringement by third parties
Our intellectual property lawyers in Paris assist you in all the steps necessary for the protection and enhancement of your trademarks (searches for prior rights, registration, support in the context of opposition proceedings, etc.).
Trademark prior art searches
Before registering your trademark, it is strongly recommended to carry out an exhaustive prior art search among the prior trademarks, company names, trade names, and domain names.
This analysis makes it possible to ensure that there are no legal obstacles in the countries in which the filing and exploitation are envisaged, in particular in order to avoid the risks of prosecution on the basis of infringement or unfair competition.
Obstacles to registration can be many, such as:
- The owner of an identical earlier mark registered for identical goods and services,
- The owner of a similar trademark registered for similar products and/or services and with which there is a risk of confusion,
- The company exploiting a well-known mark,
- The owner of an exploited commercial name,
- The owner of an exploited corporate name, a copyright, protected designs and models,
- The name of a local authority etc.
These obstacles can lead to abandoning the initial project and filing a new trademark.
We carry out prior art searches to identify the potential risks associated with the filing and use of the sign that you plan to use as a trademark.
Drafting the wording of your trademark’s products and/or services
Following this analysis, we assist you in drafting the wording describing the products and services targeted by your trademark filing.
This ensures that the goods and services for which your application for registration is filed are perfectly in line with the intended use (the mark is only protected for the goods and/or services for which it is registered and not for the products and services for which it is used).
Indeed, the reform of the “Trademark Package” has codified the requirement for a clear and precise list of products covered by a trademark, identified by the Court of Justice of the European Union in its IP Translator judgment of June 19, 2012.
Registration of your trademark
We also support you in the process of registering your trademark in the countries where exploitation is envisaged.
The trademark can be registered:
- In a country: national brand (for example, a French brand via a deposit with the INPI);
- Throughout the European Union (European Union trademark), in this case, you have a unitary title for the entire territory of the European Union;
- Or even in several countries at the same time via an international trademark application to the World Intellectual Property Organization (WIPO).
The international trademark mechanism is a centralized filing process instituted by the “Madrid System”. It makes it possible to obtain protection in several countries via a single filing to WIPO by designating the countries in which protection is sought. The main advantage of this system is the payment of a single fee. However, this is only a centralized filing process, the registered sign will become a national mark in each of the designated countries.
Our firm carries out all the formalities for filing your trademark with the various intellectual property offices of the countries in which protection is sought.
Response to notifications from intellectual property offices
We also support you in all the difficulties you may encounter during the registration phase such as notifications of irregularities issued by an intellectual property office (INPI, EUIPO, USPTO, etc.) or an opposition procedure initiated against your trademark by the holder of prior rights (in particular before the INPI and/or the EUIPO).
Drafting of contracts relating to your trademark registration/application
Finally, once the registration of the trademark is effective, the lawyer in charge of your case will assist you in drafting all the legal acts made necessary by the life of your trademarks, such as trademark license agreements, brand assignment, coexistence agreements, or brand pledge agreements.
Management of your infringement litigation by an expert lawyer in trademark law
In the event of a dispute, our intellectual property lawyers specialize in infringement litigation and have solid expertise in all procedures aimed at defending trademark rights.
In this context, we assist you by diligenting the following actions:
- The implementation of monitoring in the countries in which your brands are protected and operated (monitoring of registered trademarks, monitoring of social networks, etc.),
- The drafting and filing objections,
- The preparation, filing and renewal of customs declarations for the seizure of counterfeit products both in France and in the European Union,
- The initiation of nullity actions against registered trademarks which would infringe your prior rights,
- The initiation of action for infringement and/or unfair competition.
Finally, we defend you effectively in the context of proceedings initiated by third parties against the filing and/or use of your trademarks such as oppositions, actions for nullity, actions for revocation, actions for infringement and/or unfair competition.
Implementation of a strategy with a trademark lawyer
We advise you in the implementation of a real strategy of protection and defense adapted to the new vectors of distribution of counterfeit products and to the new methods of counterfeiters.
Due to the digital transformation, counterfeiting on social networks and on online sales platforms (amazon, alibaba, etc.) has exploded.
It is essential for the company to put in place a strategy for the protection and defense of its intellectual property assets, and as such of its brands, which adapts to these new challenges.
In this context, our trademark lawyers support you, in particular:
- In the implementation of a protection strategy adapted to e-commerce and social networks;
- In carrying out procedures for notification of infringements of your trademark rights on online sales platforms and on social networks;
- In registering your brands on brand registry platforms;
- In the definition of alternative strategies to legal action to put an end to infringing acts.
Dispensation of training in trademark law by our specialized lawyers
Our Firm provides several training courses on the different aspects of trademark law, for example:
- “Attack on the company on social networks: implementing an appropriate strategy” (Dalloz Formation),
- “News in trademark and design law 2018: assessment and practical consequences” (Intellectual Property and Digital Day),
- “Digital transformation of the company: the lawyer’s toolbox” (Dalloz Formation),
- “Breakfast on Trademark Law Reform (February 27, 2020).
We are also an active member of the Association of Trademark and Design Law Practitioners (Apram).
Our lawyers provide you with frequently asked questions (FAQ) on trademarks, allowing you to have the first answers on questions such as, for example:
- Why doing a prior art search?
- How is the filing procedure?
- How does the opposition procedure take place before the INPI?
- What are the key aspects of a trademark assignment agreement?
- What are the key aspects of a trademark license agreement?
- How to set up corporate brand monitoring?
News in trademark law written by our specialized lawyers
We regularly write news on the latest legislative and jurisprudential developments in trademark law.
You can consult them in the legal news section of the site.