Why register your trademark?

A trademark is a distinctive sign that can take many forms: a name, a logo, the association of a name and a logo, a sound, a slogan, a design, a smell, a series of moving designs, etc.

It is the image of a company in the eyes of the public, creates product or service awareness and helps distinguishing them from those of competitors.

If it is not registered, then it is not protected and can be used by a competitor which could file it in their name. The owner the trademark can thus prohibit others from using it, including its creator. Owning your trademark protects you and your business and therefore grants you a monopoly to market or communicate about your products and services.

A well-protected brand improves the image of the owner company and increases its value. Indeed, as an intangible asset, it can become part of the company’s assets.

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Criteria for filing a trademark

The mark must meet several legal requirements such as not being contrary to public order and not being misleading for the consumer. To be registered, it must also have a distinctive character, that is to say that the sign chosen must not clearly describe the product or service corresponding to the business of the company, nor its main characteristics.

In addition, the trademark must be available, i.e. not already registered by a third party. Since most Offices are not required to carry out these verifications, it is up to the applicant’s responsibility. The clearance search is strongly recommended because it allows you to have visibility on existing prior marks that can be obstacles. Firms specializing in intellectual property such as Brandon IP can assist you in these procedures.

When filing a trademark, you must also choose the list of goods and services for which protection is sought. They are gathered into administrative classes according to the Nice classification. The protection will apply to all the selected classes. This is the specialty principle. It will therefore be possible to register its mark in a class of products while another company uses the same mark on a very different market, unless this causes confusion in the minds of consumers (especially when the mark is well known).

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IP attorneys closest to you and your expectations

With more than 155 years of existence, Brandon IP is one of the oldest intellectual property firms in France. We support companies of all sizes in the protection of their brands and intellectual property, with customized services tailored to their needs.

As a guarantee of our expertise, Brandon IP is ranked among the best French IP attorneys firms by Leaders League.

Our trademark department is made up of a multidisciplinary team with IP attorneys specialized in trademarks and designs, experts in their field for more than 15 years and legal assistants authorized to manage all administrative formalities.

In addition, our partnership with Brandon Valorisation, innovation consultants for more than 30 years, allows us to offer you effective support in the valuation of your brand portfolio.

Found out more about Brandon IP team here: www.brandon-ip.com/your-contacts/

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Services offered by Brandon IP

Our experts are able to help you in the following areas:

1/ The acquisition and defence of your trademarks

• Advice and implementation of a strategy to protect your brands
• Prior art search: checking the availability of the sign you plan to file as a trademark
• Trademark filing formalities with the various Offices: INPI (National Institute of Intellectual Property) in France, EUIPO in the European Union, WIPO internationally and all other Offices abroad.
• Follow-up of examination procedures before the Offices
• Monitoring of the expiry dates of your intellectual property titles
• Renewal of your trademarks
• Registration of all changes in the registers of the Offices (assignment of the mark, license, change of address, name, etc.)
• Worldwide extension of your trademarks, thanks to a network of selected partners around the world.

2/ The defence of your trademarks

• Monitoring the publications of competing brands
• Opposition: filing and follow-up of administrative opposition and invalidity procedures before the Offices
• Advice and management of pre-litigation: letters of formal notice, negotiation, transaction, etc.
• Organization of counterfeit seizures and findings in the event of a dispute
• Legal action on the ground of infringement, unfair competition and others, in partnership with specialized attorneys
• Usage survey on competing brands

3/ Valuation of trademarks

• Negotiation and drafting of contracts: assignment or trademark license, coexistence agreement and others
• Audit of your trademark portfolio or due diligence
• Financial valuation study: estimating the value of your brand or your trademark portfolio, in partnership with Brandon Valorisation, experts in valuating intellectual property.

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