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 name or the domain name.
Trademark law
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 owner.
There are three types of brands:
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 brand
The European Union mark which is a unique title covering all the member states of the European Union.
The international brand
The international trademark that allows to file a single application and to designate within this single application the member countries of the Madrid Union, i.e. the countries that are signatories of the Madrid Agreement and/or the Madrid Protocol.
How to register a trademark
IlIt is important to be assisted during the filing of a trademark in order to be advised on the opportunity to proceed with such a filing.
Bouchara & Avocats is specialized in trademark law and can assist you in your filing project and advise you in order to determine with you :
- The wording that will effectively protect you and cover your entire business;
- Key countries in which your trademark should be registered.
Trademarks confer a property right on distinctive signs. It is important to be represented by lawyers, as it is your lawyer who will manage your rights. Our firm advises its clients, in a practical and efficient way, in order to assist them in the filing of their trademarks but also in the framework of infringement litigation in Paris, but also all over France.
Filing of a national trademark
In general, the term of protection of 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.
Registration of a European Union trademark
The term of protection for a European Union trademark is 10 years.
Because of its unitary nature, the term of protection is identical in all countries of the Community and if the rights held on the trademark are lost in a Member State, the whole Community trademark is lost.
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
Your international trademark at 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, while the Madrid System facilitates the filing of trademarks in different countries, the fate of the trademark in those countries will depend on each national legislation.
Our firm will, if necessary, assist you through its correspondents in order to respond to the notifications issued by the Trademark Offices of each designated country.
How to protect your brand
A trademark is a sign that must be protected and trademark protection must be done from the moment you think about creating a trademark, until you decide to never use the trademark again.
Before the trademark
is filed…
Ensure that the trademark is distinctive & available
Our lawyers carry out prior art searches for you in France, and also abroad if necessary, and analyze them to enable 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, i.e. a sign that is distinctive and lawful. Our firm will advise you in the choice of your sign to avoid a trademark cancellation action being brought against your trademark.
Monitor deadlines
To protect your trademark, it is essential to keep an eye on deadlines and, in particular, to renew it properly. Our firm will notify you of your trademark renewal deadlines so that you do not lose your rights to your sign and will assist you with your renewal procedures.
After the registration of the trademark …
The forfeiture of the trademark
To protect your trademark, it is essential to use it. Indeed, any third party has the option of taking action to revoke the trademark for lack of genuine use for an uninterrupted period of time, which varies depending on the country in which it is applied for, but is 5 years in Europe. Our firm can also assist you in any revocation actions that you may bring against third parties or that may be brought against your trademark.
Action for infringement
In order to protect your trademark, it is imperative that you take action against any third parties who use your trademark without your authorization. Our lawyers will assist you in monitoring and analyzing with you the best strategy to stop third parties from infringing your trademark. They will represent you and defend your rights not only in the event of litigation but also in the context of an infringement action in which you could also invoke the invalidity of the earlier trademark.
Other distinguishing features of the company
Une entreprise est également titulaire d’autres droits sur son nom, et notamment sur sa dénomination sociale, A company also holds other rights to its name, and in particular to its company name, its trade name, its brand name and also to any domain names it may hold.
Such signs could constitute prior rights that can be enforced against trademarks, since the provisions of Article L. 711-3 of the Intellectual Property Code stipulate that:
A sign that infringes prior rights may not be adopted as a trademark, in particular:
- A company name or business name, if there is a risk of confusion in the mind of the public
- A trade name or sign known throughout the national territory, if there is a risk of confusion in the mind of the public
- A protected designation of origin
- Copyright
- The personality rights of a third party, in particular their surname, pseudonym or image
- The name, image or reputation of a local authority.
There is a wealth of case law allowing the holder of one of these prior rights to oppose it to a subsequent trademark, and that is why it is necessary to be extremely vigilant with regard to such rights, in particular by carrying out extensive searches before filing.
It is also necessary to be aware of one’s rights and to assert them in the event of infringement.
Our services
Assistance and advice
We carry out prior art searches and determine the most appropriate filing strategies: French, Community and international filings.
We setting up surveillance among brands, company names, domain names. We also manage the filing of customs surveillance files.
Negotiation and drafting of contracts
We assist you in the negotiation and drafting of assignment, license and coexistence agreements for trademarks, domain names and other distinctive signs.
Representation
– opposition proceedings before trademark offices;
– Alternative dispute resolution procedures for domain names, such as the UDRP;
– Litigation before national and Community courts in matters of trademarks, domain names and other distinctive signs.
