Trade mark lawyers

Developing an effective filing strategy

Do you want to protect the name under which you conduct your business? Filing a trade mark application is an option you should consider. It may also be appropriate to seek trade mark protection for the names of your flagship products, your service offerings, your logo or your product packaging. Trade mark law now offers a wide range of possibilities, including figurative marks, position marks, hologram marks and motion marks.

Our advice on the requirements for trade mark protection

Your chosen name may be appealing from a marketing perspective, but is it eligible for protection? We advise you on the requirements for a valid trade mark, helping you select signs that are most likely to secure the strongest possible protection under trade mark law.

For example, a name that is too descriptive may be rejected by the French National Institute of Industrial Property (INPI), such as choosing “Beautiful Furniture” to sell furniture.

Checking trade mark availability before filing

Is your chosen name available in your market? Before making your final choice or filing a trade mark application, we strongly recommend carrying out a clearance search for earlier rights.

If a third party already uses an identical or similar name in the same business sector, for example as a trade mark, company name or domain name, they may be able to rely on their earlier rights to challenge your use or application. It is therefore essential to carry out the necessary checks before proceeding. As trade mark lawyers, we guide you through this process.

Filing your trade mark application

Filing a trade mark application is an important step. Getting it right is essential. Although the filing process may appear straightforward, there are pitfalls to avoid to prevent future disputes. These include applications covering a broader range of goods and services than your actual business activities, descriptions that are too vague, or specifications that fail to cover all your activities.

A preliminary clearance search also helps us develop the most appropriate filing strategy in light of any earlier rights identified, giving your rights the strongest possible protection.

Supporting and protecting your trade mark throughout its lifecycle

Setting up trade mark monitoring

Once your trade mark application has been filed, monitoring can help you challenge new applications, particularly through opposition proceedings, and make full use of your protection. You should actively monitor your own market.

We also assist by setting up a watch service covering new trade mark applications in the territories where you operate, so that we can alert you promptly to any potential conflict.

We then develop a strategy to resolve the issue, for example by sending a cease-and-desist letter or bringing opposition or invalidity proceedings before the relevant intellectual property office.

Trade mark portfolio management and renewal tracking

Ten years is a long time… yet that is when you will need to renew your trade mark. One important point: the relevant office, in France at least, will not remind you of the deadline.

Using our dedicated trade mark portfolio management software, we ensure that you receive reminders of all relevant deadlines, including the deadline for renewing your trade mark.

Drafting and negotiating licence or franchise agreements

Would you like to grow your business by granting a third party rights to use your trade mark under a licence or franchise agreement, but are unsure how to formalise the relationship?

Our firm will help you identify the most appropriate contractual arrangement and work with you to draft a tailored agreement that safeguards your interests and reflects the practical realities of your business.

Extending your protection internationally

Is your business expanding internationally, and do you therefore want to extend your trade mark protection to other countries?

Working with our network of local counsel, we help you develop the most suitable strategy. This may involve applying for a European Union trade mark, an international registration designating selected territories, or national trade marks in countries of particular interest to your business.

The most appropriate option will depend on your expansion strategy and the specific legal requirements in the countries concerned.

Taking action when your rights are infringed

Copies of your trade mark are appearing on the market. What can you do to stop the infringement?

We assist you in obtaining formal evidence of the infringement, for example through an official report drawn up by a judicial officer or a court-authorised evidence-gathering procedure known in France as a saisie-contrefaçon. We also help you bring the infringement to an end through cease-and-desist letters, proceedings before intellectual property offices or court action.

We can assist you with all these matters and more. You may already find answers to your questions below. If not, please contact us.