Trademarks law

Our firm works to protect and manage intellectual property rights, as well as litigation arising from them.

As part of our work providing advice and dealing with litigation proceedings, our firm assists clients to promote their companies, and to protect and defend their elements of intellectual property. We are often required to provide our clients with the following services:

Our services
Trademark transfer agreement

With this agreement, the owner(s) of a trademark can transfer its ownership to one or more persons. The transfer of ownership can be carried out for free or in return for compensation (a sum of money, service, etc.)

Trademark licence agreement

This is an agreement where the owner of a trademark (or rights over the trademark) temporarily grants the right to use this trademark to another person in return for a payment or service.
As a result, the compensation may depend on the trademark, as well as the exclusive nature of the licence. If the licence is exclusive, the compensation may be greater.

Process of Nullity of Trademark

This is an action which retroactively challenges the validity of a trademark. There are two types of nullity process. The first is based on the unlawfulness or lack of distinctiveness of the trademark, and can be initiated by anyone. The second concerns a violation of the trademark to existing rights (a trademark, a domain name, a trading name, copyright, etc.) of any other person. In this case, only the holder of the existing right or their assignees can request the nullity.

Trademark Revocation Process

This is an action which consists of obtaining the revocation of the rights of the trademark holder(s). This action can be initiated in the event of non-use of the trademark (for five years) by those who hold the rights to it, or if the trademark has become generic or misleading.

Procedure for opposing the registration of trademarks/Response to opposition proceedings

A procedure for opposing the registration of trademarks is open to anyone who believes that a new trademark application may constitute a violation of their rights.
It must be addressed to the INPI (French National Institute of Intellectual Property) or the office concerned.
If the opposition procedure is successful, the registration of the contentious trademark will not be permitted and the owner of the original trademark is able to protect their rights.
By responding to an opposition procedure, the party wishing to register a new trademark which has been contested by an existing trademark owner can defend their trademark by presenting their arguments. For instance, this may involve contesting the validity of the existing trademark, or requesting its revocation due to non-use.

Renewal, withdrawal, termination

The duration of validity of a trademark is ten years. The renewal of a trademark must be requested, and the owner must remember to renew it within the timeframe outlined by the relevant office (INPI, OHIM, etc.) The renewal may be partial, but in no event can it involve an extension of services or products covered by the trademark. Indeed, in this case, a new application needs to be filed.
The owner of the rights may freely request the withdrawal of the trademark, providing the technical preparation for the registration of the request has not yet been initiated.
Otherwise, it would be a termination rather than a withdrawal, which must be paid for.

Response to an objection from INPI

Upon receiving a trademark application, the INPI, or the OHIM, check the validity of the trademark requested before registering it. Following this assessment, if the requested trademark does not fulfil the trademark validity conditions set out by the provisions of the Intellectual Property Code, the competent body informs the trademark applicant of its objections in writing.
The applicant then has a fixed amount of time to respond to these objections.
Our firm assists clients in this procedure and draws up a justified response to invite the Office to withdraw its objection and accept the trademark application.
The INPI, the OHIM, and most of the other intellectual property offices check the validity of the trademarks that they register. Consequently, only a response based on legal justification is likely to lead to a successful outcome.
Celui-ci dispose alors d’un délai pour répondre à ces objections.
Notre cabinet accompagne ses clients dans cette procédure et rédige une réponse argumentée pour inviter l’Office à revenir sur son objection et à accepter le dépôt de la marque demandée.
L’INPI, l’OHMI, ainsi que la plupart des offices de propriété intellectuelle veillent à la validité des signes qu’ils enregistrent. Par conséquent seule une réponse fondée sur un argumentaire juridique est susceptible d’emporter sa conviction.

Registration of trademarks (national, European, international)

The registration of a trademark is an essential stage in building a strong corporate identity and promoting a company to potential investors. Indeed, it allows a company to obtain rights over a sign which can be used as a tool of recognition and communication by its owner. This registration is carried out for a fee through a procedure which varies depending on whether a company wishes to register a national, European or international trademark.
The registration is carried out in accordance with a specific procedure set out by each of the offices involved in the registration (INPI, OHIM, WIPO, USPTO, etc.) and must include a search of existing trademarks in order to avoid, as far as possible, any subsequent challenges to the trademark, i.e. an opposition procedure or an objection made by the Intellectual Property Office.
Indeed, very often, trademark applicants believe that they are protected from any issues once the formalities of the application have been completed, and invest in various communication tools. They are then faced with an opposition or objection to their trademark which forces them to adjust their communication strategy or even scrap all of the work carried out if the opposition or objection leads to a rejection of the trademark.

Consequently, each application is assessed by the INPI or the office concerned, which may oppose the trademark request, providing the applicant with its written objections.

Customs intervention request (national/European)

A request to withhold counterfeit goods enables the temporary seizing of goods suspected of being counterfeit by customs, to allow the trademark rights-holder to obtain a judicial ruling on whether their rights have been violated. This is the best way of proving counterfeit goods and ensuring sanctions are imposed.