In the field of intellectual property rights protection , the management of trademarks and international rights has taken on particular importance in recent years. The exponential growth of all exchanges (all businesses combined) as well as the strong development of online marketing (Web) are the cause.

As a result of this development, intellectual property practices in France, Europe and around the world have had to adapt. It is a permanent challenge.

Our international trademark registration actions can be summarized as follows:

• On the basis of a file presented by our client, we establish a project in which is evaluated the feasibility, the various stages to be respected, as well as the estimate of the budget , and in particular of the duties, taxes and emoluments related to the various deposits. projected. Most often, we are in contact with the exporting department of the depositor.

• Definition of the perimeters : classes of products and / or services concerned and geographic extent envisaged . At this level, the grouping criteria are chosen, namely: national marks in the countries concerned or else, pre-established groupings such as for example: an international mark (WIPO) targeting a list of member countries, within the framework of the protocol. and the Madrid Agreement, or a European Union trademark targeting all EU countries . We adapt the proposed strategy to the choices and concrete protection needs of our clients.

• Research and analysis of prior art that could hinder the registration of the mark internationally and its use. It is about identical searches or similarity.

• Filing of trademark applications at the international level, most often on the basis of a French registration, depending on the schedule and the constraints relating to each of the targeted territories. Information in real time is communicated to the depositor: date of publication / deadline for appealing third parties who can oppose / register . The deadlines vary greatly depending on the territory and our team is trained in the follow-up of cases in conjunction with our correspondents abroad.

• Possible management of actions by third parties and local or regional offices (responses to oppositions made, responses to formal and / or substantive objections).

Negotiations with third parties with a view to eliminating any risk of subsequent litigation , which could lead to the conclusion of coexistence agreements . Our experts are familiar with these negotiations and the analysis of constraints and opportunities (for example actions for revocation of unused rights).

• Throughout the process, the partnership established with our clients generates constant monitoring and information for the client, as well as a calendar evaluation concerning the forecast / achievement of compliance with each of the stages.

• As soon as the mark is registered in the international register kept by WIPO , the process of monitoring and protecting the mark is put in place throughout the "life" of the protected rights.

Among the most common actions we will mention:

o Trademark surveillance : This service is based on an IT watch carried out on official databases and makes it possible to know on a regular basis, the filings of identical and similar brands newly published. Trademark surveillance allows the owner of the monitored trademarks to react against them by initiating, when possible, oppositions, which are less costly than legal proceedings.

o Compliance with the trademark renewal schedule in the country or countries concerned (very variable depending on the territory and the nature of the rights).

• Transfer management : world trade is very often subject to so-called “M & A” operations (Mergers and Acquisitions). Intellectual property is part of the assets of companies and any modification of the owner of the rights must be made with the corresponding registers. For example, to be able to act against an infringing mark , only the registered property can act, and it is therefore necessary that the registers are up to date (ie on behalf of the entity that wishes to act).

• We have recognized know-how and support our clients with regard to registration formalities in the field of transfer contracts, licensing, pledges, etc., whether these operations are carried out primarily. or incidentally in any transaction.

• Our customers benefit from personalized advice , all in an ultra-secure environment.

• Audits: Our action takes place at two levels :

o During acquisition / disposal operations : this is an essential step prior to any operation, in order to assess the value of the rights transferred and the associated risks.

o Given the specific nature of our business and the constant evolution of regulations , we suggest that portfolio audits be established on a regular basis. This can lead to the abandonment of unexploited rights and thereby to significant budgetary savings.

• Counterfeiting : the infringement action consists in defending the interests of your brand in court.