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?
It 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
Our attorneys can assist you in filing your French trademark with the French National Institute of Intellectual Property, but also in the context of national filings in other countries for which our firm has local correspondents.
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
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 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
Our firm, composed of lawyers specialized in trademark law, assists you in filing your international trademark in order to realize your projects abroad.
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?
How
protect its 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 deposit
of the brand…
Our attorneys carry out prior right searches in France, but also abroad if necessary, and analyze them in order to allow you to register a sign that does not infringe on the prior rights of third parties.
The second reflex is to register a valid trademark, i.e a distinctive and legal sign. Our firm advises you in the choice of your sign in order to avoid that an action for cancellation of the trademark is brought against your mark.
Monitor deadlines
In order to protect your brand, it is essential to respect the deadlines and in particular to renew your brand properly. Our firm will inform you of the renewal deadlines for your trademark so that you do not lose your rights to your sign and will assist you in your renewal procedures.
After registration
of the brand …
Revocation of the trademark
In order to protect your brand, it is essential to exploit it. Indeed, any third party has the possibility to act for revocation of a trademark for lack of serious use during an uninterrupted period which varies according to the country in which it is applied for but which is 5 years in Europe. Our firm also assists you in all actions for revocation that you may bring against third parties or that may be brought against your trademark.
Infringement action
In order to protect your trademark, it is imperative to act against all third parties who would use your sign without your authorization. Our lawyers will assist you in the monitoring and analyze with you the best strategy to stop third party infringements against your trademark. They represent you and defend your rights before any litigation but also in the context of an infringement action in which you could also invoke the invalidity of the prior trademark.
Other distinctive signs of the company
A company is also the owner of other rights on its name, and in particular on its corporate name, its trade name, its sign and also the domain names it may own.
Such signs could constitute prior art that can be used against trademarks since the provisions of Article L. 711-3 of the Intellectual Property Code provide that :
A sign that infringes on prior rights may not be adopted as a trademark, and in particular :
A trade name or sign known throughout the national territory, if there is a risk of confusion in the mind of the public
There is a lot of precedent that allows the owner of one of these prior rights to oppose their rights to a later trademark, therefore it important to be extremely aware of these rights by doing a complete investigation before registration.
It is also important to be aware of your rights and to assert them if they are violated.
Other distinctive signs of the company
A company is also the owner of other rights on its name, and in particular on its corporate name, its trade name, its sign and also the domain names it may own.
Such signs could constitute prior art that can be used against trademarks since the provisions of Article L. 711-3 of the Intellectual Property Code stipulate that :
A sign that infringes on prior rights may not be adopted as a trademark, and in particular :
A trade name or sign known throughout the national territory, if there is a risk of confusion in the mind of the public
There are numerous jurisprudences allowing the owner of one of these prior rights to oppose their rights to a later trademark, and this is why one must be extremely vigilant with regard to such rights by performing extensive searches before filing.
It is also important to be aware of your rights and to assert them if they are violated.
Our services
Assistance and advice
We assist and advise you in the protection of the rights of owners of distinctive signs (trademark law, domain names, company names, trade names, signs).
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
We represent you in :
– 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.
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