The distinctive sign thus allows the consumer to link the goods and/or services bearing a trademark to the company that owns it.
If the trademark is the most well-known distinctive sign, the corporate name of a company or its domain name are also commercial identifiers of a company on the market which can also have an important economic value.
The trademark can be protected in three ways, namely:
- Via anational trademark registration:
The protection of the trademark is limited to the country in which it is registered.
- Via a European Union trademark registration:
The trademark is then protected in all member states of the European Union under a single intellectual property title.
- By filing an international registration:
The owner will have to file his trademark application through the Madrid System, which allows to file a single application to designate one or more member countries of the Madrid Union. This is a centralized deposit for which an initial deposit fee must be paid plus the fees for each designated country.
What are the steps to follow to register your trademark?
It is recommended to be accompanied by a specialist in trademark law throughout the filing process in order to study, in particular, the validity of the sign to be filed, the appropriateness of such a filing and the extent of the projected exploitation.
The Bouchara firm proposes to accompany you in your filing project and in particular for
- Verify the existing prior rights that could hinder your project by conducting a search for prior rights among trademarks, company names and domain names;
- Analyze the distinctiveness of the sign which is a basic condition for its registration as a trademark;
- Draft the wording of the classes of products and/or services which will be designated by the deposit so that it covers all your activities in the short, medium and long term;
- The key countries in which your trademark should be registered in view of your development prospects.
How protect your brand?
A trademark is a distinctive sign that has a strong economic value, it must therefore be protected as soon as it is registered and until it is no longer used.
The steps to register your trademark …
Checking the availability of the sign
Bouchara’s firm conducts searches for you in France and abroad among the prior rights that may constitute obstacles to your project (particularly among prior trademarks and company names).
We proceed to the analysis of the results by evaluating the legal and practical risks in case of reaction of third party owners of prior rights in order to allow you to anticipate them before any trademark filing.
Analysis of the validity of the sign
The registered trademark must also be valid, i.e. it must meet the substantive and formal requirements of the Intellectual Property Code.
Bouchara Law Firm analyzes for you the sign that is the subject of the registration and in particular its distinctive and legal character.
Our firm advises you in the choice of your sign in order to reduce the risk of official notification of refusal issued by the Office and the risk of cancellation actions by third parties that may be brought against your trademark.
Monitoring of deadlines
In order to maintain the protection of your trademark, it is essential to monitor the deadlines and in particular those for the renewal of your intellectual property title.
Bouchara follows all the steps to be taken during the life of your trademark (extension under priority, registration, renewal, etc.) and is responsible for informing you of the deadlines in order to optimize your trademark rights.
After the registration of its trademark
Ensure the effective exploitation of your brand
A trademark is registered in a territory (principle of territoriality) to designate goods and/or services (principle of specialty). If the owner of a trademark benefits from a registration, it is still necessary that he exploits it in an effective and serious manner for all of the designated goods and/or services and in the territory that granted this title. Indeed, in France, a trademark that has been registered for more than 5 years is vulnerable to a lapse action, which can be brought by any third party. If you are unable to prove genuine use of your trademark for an uninterrupted period of 5 years prior to the revocation action, your trademark may be cancelled. Each Board has its own legislation in this area. In China, for example, a march can be subject to a lapse action as of the third year following its registration.
Bouchara Law Firm assists you in the preparation of proofs of use and actions for forfeiture that you may initiate or suffer.
Reacting to third-party counterfeits
Protecting your trademark also means reacting to third parties who use your sign without your authorization.
Bouchara assists you in monitoring your trademarks on trademark databases and on the Internet. We analyze with you the exploitations infringing your rights in order to propose the best strategy to neutralize the infringements of third parties against your brand.
Bouchara Law Firm ensures the protection and defense of your intellectual property rights before the Offices and the Courts (infringement action, nullity action, unfair competition action etc.).
Other distinctive signs of the company
The company owns several business identifiers that constitute rights, including its corporate name, sign and domain name.
These signs could constitute prior rights opposable to trademarks since Article L.711-3 of the Intellectual Property Code provides that :
I.-No person may be validly registered and, if registered, may be declared invalid, a mark that infringing prior rights with effect in France, in particular :
(3) a name or a company name, if there is there is a risk of confusion in the the of the public ;
(4) A trade name, a sign or a domain name, whose scope is not only local, if there is a there is a risk of confusion in the in the mind of the public ;
5° A registered geographical indication mentioned in Article L. 722-1 or an application for a geographical indication subject to the approval of its specifications and subsequent registration;
It is therefore important to be aware of all the rights relating to a company’s commercial identifiers in a market and to assert them in case of infringement.
Assistance and advice
Bouchara Law Firm assists you in optimizing the protection of your distinctive signs (trademark law, domain names, company names, trade names, signs, graphic charter etc.).
We carry out prior art searches in order to determine with you the most appropriate filing strategies. We also monitor trademarks, company names and domain names in order to detect infringements of your rights by third parties as early as possible. Bouchara also assists you in setting up customs surveillance.
Negotiation and drafting of contracts
Our team assists you in the management and exploitation of your distinctive signs, and in particular in the contractualization of your rights (negotiations and drafting of assignment, license, coexistence, confidentiality agreements, etc.).
We represent you in :
- administrative proceedings before the Intellectual Property Offices (opposition proceedings, nullity proceedings, revocation proceedings, etc.);
- alternative dispute resolution procedures for domain names, such as the UDRP or SYRELI;
- Litigation before national and European Union courts regarding trademarks, domain names and other distinctive signs.