Protection and filing of trademarks
A trademark consists of any distinctive sign which, when affixed to a product or accompanying a service, makes it possible to identify it and to distinguish it from products and services originating from other undertakings. It can take the form of a name, a logo, a shape, a colour, a sound or a slogan, subject to the requirements that the sign is valid, lawful and available. The term of protection granted by a trademark is 10 years, but this can be renewed indefinitely.
Our mission is to guide you through the necessary steps such as searches for prior rights, the procedures for filing and renewing your trademarks, opposition procedures in France and overseas, monitoring of your trademarks in the registers of trademarks, companies and domain names, as well as the negotiation and drafting of assignment or licensing agreements.
Trademark protection consists in enabling you to benefit from a monopoly over the exploitation of one of your distinctive elements that is capable of attracting the attention of consumers. This involves a number of steps.
Trademarks and other distinctive signs
A trade name (nom commercial) identifies a business; it serves to distinguish one undertaking from another.
A signboard (enseigne) designates both the name of the sales outlet and the physical support enabling it to be identified by customers. The purpose of a signboard is to identify the premises where operations are taking place. Its purpose is not to identify the business or the undertaking which manages it, though it may have the same name as the trade name.
A company name (dénomination sociale) is the name of a company and identifies it as a legal person in the commercial and companies register (RCS). All companies must have a company name and they are free to choose the term that they wish.
A designation of origin (appellation d’origine) is a collective distinctive sign which guarantees the geographical origin of a product. When a product is able to benefit from a designation of origin, it will be possible to incorporate it in a complex mark.
Checking the availability of a trademark
and determining the distinctive elements
We will help you to determine your distinctive elements that are eligible for protection by looking at each of your new projects to provide you with our comments.
We of course analyse the distinctiveness of the proposed trademarks prior to filing and warn you if there is a risk of objections being raised. We therefore generally recommend the filing of word marks for increased protection, but sometimes advise that a logo be added in the event that there is a risk of descriptiveness.
Filing a trademark
At the outset, we propose carrying out searches of prior rights for the purpose of establishing that the name selected is available vis-à-vis third parties. In the event of any obstacles, and in particular of “unknown existing trademarks”, we seek to find parallel solutions such as applications for prior authorisation and coexistence agreements, and potentially actions for forfeiture or for fraudulent filings, purchase offers, etc.
The scope of the filing and the filing of international trademarks
In terms of the wording of the goods and services to which your trademark filing relates, we analyse with you the scope that is necessary for each filing: broad wording may make it possible to react more easily to future filings in respect of non-identical goods, but may also give rise to unnecessary oppositions, and poses the problem of the actual use of the trademark; narrow wording may mean that the obstacles are avoided but it reduces the extent of protection.
We will also advise you regarding the extent of your filing in geographical terms, taking into account your suppliers, your markets and your budget, and will suggest to you the route (Community, international or national) that is best suited to your needs.
The filing procedure
We then undertake the filing and oversee the entirety of the procedures before the Offices ourselves or do so in partnership with our colleagues in the relevant countries. You will be regularly informed about how the procedures are progressing; if obstacles arise, we will send you all of the information, accompanied by advice and an estimate of costs.
We will of course remind you of the priority periods and deadlines for the purposes of any extensions and renewals that you may undertake.
Protection of trademarks
and monitoring of your rights to protect them from third-party infringements
Finally, if you so wish we offer to carry out monitoring of your trademarks in the registers of trademarks, companies and domain names in order to enable you to adopt the measures necessary for the defence of your rights.
This service comprises regular notifications of relevant publications accompanied by an opinion on the appropriateness of taking legal action, a reminder of the time limits and an estimate of costs.
We take responsibility for all of the administrative procedures relating to oppositions before the French and Community offices, and before national offices via our colleagues in the relevant countries.
We also recommend, depending on the situation, pre-litigation interventions of the pre-action letter type and, where necessary, we put together litigation files so that our lawyers can take action. In relation to this type of dispute, we place great importance on very quick reaction and execution periods in order to limit the infringements.