Trademark law

Areas of expertise >     Trademark law

Trademarks and other distinctive signs have a role in identifying one company from another. The distinctive sign is therefore a rallying sign for customers. The trademark is the most well-known distinctive sign, but there are others such as the company's corporate name or its domain name.

Straight brands

A trademark is a distinctive sign that identifies the origin of a product or service. It is an intellectual property right and can be of great economic value to its holder.

There are three types of marks:

The national brand

The national trademark which, by definition, has a geographical scope limited to the country in which it is registered.

The European Union mark

The European Union mark which is a single title covering all the Member States of the European Union.

The international brand

The international trademark that allows you to file a single application for registration and to designate within this single application the member countries of the Madrid Union, i.e. the signatory countries of the Madrid Agreement and/or the Madrid Protocol .

How register your brand?

It is important to be assisted during the trademark registration in order to be advised on the advisability of making such a deposit.

Bouchara Law Firm & Lawyers specialized in trademark law proposes to accompany you in your filing project and to advise you in order to determine with you:

  • The wording that will effectively protect you and cover all of your business;
  • The key countries in which your trademark will need to be registered.

Filing of a national trademark

The firm's lawyers assist you with the filing of your French trademark with the National Institute of Intellectual Property, but also in the context of national filings in other countries for which our firm uses local correspondents.

In general, the term of protection for a trademark is 10 years (this is the case in France), but the term may vary from one country to another depending on the legislative provisions.

Filing for a European Union trademark

Our firm is also competent to assist you in filing your European Union trademark with the European Union Office for Intellectual Property, located in Alicante (Spain).

The term of protection for an EU trade mark is 10 years.

Because of its unitary nature, the term of protection is identical in all the countries of the community and if the rights held on the mark are lost in a Member State, then the entire community mark falls.

In this case, it will still be possible to transform the Community trademark into a national trademark in the other Member States.

Filing of an international trademark

Our firm, made up of lawyers specializing in trademark law, assists you in the filing of your international trademark in order to materialize your projects abroad.

Your international trademark with the World Intellectual Property Office (WIPO), designating the member countries of the Madrid Union.

The term of protection of the international trademark is also 10 years.

However, if the Madrid System facilitates the filing of trademarks in different countries, the fate of the trademark in these countries will depend on each national legislation.

Our firm will be able, if necessary, to assist you through its correspondents in order to respond to notifications issued by the Trademark Offices of each of the designated countries.

How protect your brand?

How 
protect your brand?

A trademark is a sign that should be protected and trademark protection should be done from the moment you think about creating a trademark, until you decide never to use the trademark again.

Before deposit
of the brand…

Our lawyers carry out prior art searches for you in France, but also and if necessary abroad, and analyze them in order to allow you to file a sign that does not infringe the prior rights of third parties.

The second reflex to have is to register a valid trademark, that is to say a sign which is particularly distinctive and lawful. Our firm advises you in the choice of your sign in order to prevent a trademark cancellation action being brought against your trademark.

Monitor deadlines

 

To protect your brand, it is essential to monitor deadlines and in particular to properly renew your brand. Our firm is responsible for notifying you of the deadlines for renewing your trademark so as not to lose your rights to your sign and will accompany you in your renewal procedures.

After registration
of the brand …

The decline of the brand

 

To protect your brand, it is essential to use it. Indeed, any third party has the possibility of taking action for revocation of the trademark for lack of serious use for an uninterrupted period which varies according to the country in which it is requested but which is 5 years in Europe. Our firm also supports you in all actions for revocation that you may initiate against third parties or that may be initiated against your brand.

Infringement action

 

In order to protect your mark, it is imperative to act against all the third parties who would use your sign without your authorization. Our lawyers accompany you in the surveillance and analyze with you the best strategy to put an end to third-party attacks against your brand. They represent you and defend your rights before any litigation but also in the context of an action for infringement in which you could also invoke the invalidity of the earlier mark.

Others hallmarks of the company

A company also holds other rights to its name, and in particular to its corporate name, its trade name, its trade name and also the domain names it may hold.

Such signs could constitute opposable anteriorities to trademarks since the provisions of article L. 711-3 of the Intellectual Property Code provide that:

A sign infringing prior rights, and in particular:

Has a denomination or company name, if there is a risk of confusion in the mind of the public

Has a commercial name or a brand known throughout the national territory, if there is a risk of confusion in the mind of the public

Has a protected designation of origin

Copyright

The right to the personality of a third party, in particular to his surname, his pseudonym or his image

In the name, image or reputation of a local authority.

There are many case law allowing the holder of one of these earlier rights to oppose their rights to a later mark, and this is the reason why it is necessary to be extremely vigilant with regard to such rights by carrying out searches in particular extensive before filing.

You must also be aware of your rights and assert them in the event of an infringement.

Others hallmarks of the company

A company also holds other rights to its name, and in particular to its corporate name, its trade name, its trade name and also the domain names it may hold.

Such signs could constitute opposable anteriorities to trademarks since the provisions of article L. 711-3 of the Intellectual Property Code provide that:

A sign infringing prior rights, and in particular:

Has a denomination or company name, if there is a risk of confusion in the mind of the public

Has a commercial name or a brand known throughout the national territory, if there is a risk of confusion in the mind of the public

Has a protected designation of origin

Copyright

The right to the personality of a third party, in particular to his surname, his pseudonym or his image

In the name, image or reputation of a local authority.

There are many case law allowing the holder of one of these earlier rights to oppose their rights to a later mark, and this is the reason why it is necessary to be extremely vigilant with regard to such rights by carrying out searches in particular extensive before filing.

You must also be aware of your rights and assert them in the event of an infringement.

Our services

Support and advice

We assist and advise you in the context of the protection of the rights of holders of distinctive signs (trademark law, domain names, company names, trade names, signs).

 We thus carry out: prior art searches and determine the most suitable filing strategies: French, community and international filings. implementation of surveillance among brands, company names, domain names. Submission of customs surveillance files.

Negotiation and drafting of contracts

We support you in the negotiation and drafting of contracts for the transfer, license, coexistence of trademarks, domain names and other distinctive signs.

Representation

We represent you in the context of:

– opposition procedures before trademark offices
– alternative payment procedures relating to domain names, UDRP type.
– contentious proceedings before national and community courts in matters of trademarks, domain names and other distinctive signs.

Service brands

Service brands