Trademark portfolio management
The trademark is a fundamental tool for business in order for your clients to identify your products and services and also to prevent competitors from creating confusion between their services and yours.
It constitutes an essential asset, which must be filed upon the creation of your company.
The attorney is an essential partner in this regard, to define the best filing strategy for your company and more particularly, to limit any related risks and difficulties.
It must be emphasized that the filing of a trademark is only valid if it respects the following conditions:
- available (not in breach of third party rights);
- distinctive (not just a description of a feature);
- lawful and not contrary to morality.
Its filing is also not a guarantee of its validity and third-party rights may be difficult to identify, as they are plentiful. For example:
- identical or similar trademark already registered for identical products and services,
- notorious or renowned trademark,
- publicly used commercial name,
- publicly used business name,
- copyright,
- protected designs and models,
- The name of a public entity (territorial collectivity, country, etc.)
Such procedure should enable you to determine whether or not your proposition may be filed as a trademark and the risks taken in this regard.
This filing requires a prior reflection in order to optimize as far as possible its relevance and also to limit the costs. It should be emphasized that in the event of an objection to the filing, the expenses relating to your application shall not be reimbursed.
Accordingly, you should ask yourself the following questions:
- What type of trademark do I want to file? Words (verbal trademark)? An image (figurative trademark)? a logo (semi-figurative trademark)?
- What products and/or services shall be proposed by the trademark?
- On what territory do I want to propose these products and services?
- What is my budget?
- Do I want to receive royalties from the trademark?
- What is the strategy for the management of the trademark abroad?
The firm shall define the best formulation possible for the products and services to be protected in order to maximize your protection (the trademark only being protected for the products and/or services for which it is registered and not for the products and services for which it is exploited).
The filing of a trademark is subject to the payment of a tax, calculated as follows in 2023:
However, the filing does not guarantee certainty, and even with the best measures, the INPI may request modifications or a third party may object to the filing application.
MOSAIK may accompany you in these exchanges with the INPI in order to establish that your filing respects the conditions stipulated by the law.
MOSAIK shall also accompany you with the drafting of memorandums in response to objections filed by third parties, before the INPI, EUIPO and before the jurisdictions specialized in intellectual property INPI (civil court, court of appeal, etc.)
Once the filing has been validated, the trademark becomes an exploitable intangible asset and which may be subject to settlements and agreements, which must be formalized in writing, and, if possible, be published on the INPI registers to be fully enforceable:
- Trademark license agreements
- Assignment agreement
- Indivision agreement
- Co-existence agreements
- Collateral agreements.
The firm shall also register these deeds with the relevant bodies (INPI, tax authorities, etc.) in order for them to be fully enforceable against third parties.
Upon detection of any infringements, MOSAIK shall accompany you in the process for the protection of your trademark, by initiating any pre-litigation (formal notice) and litigation measures:
- INPI objection
- EUIPO objection
- Summons
- Petition before the Senior President
- Petition for authorization to apply protective measures
- Confiscation of works infringing copyright
- Injunction order
- Preventive or protective measures before the pre-trial judge
The firm may also promote amicable solutions by proposing alternative dispute resolution methods:
- Conciliation
- Mediation
- Arbitration
All in order to enable you to have the best agreement possible, agreement formalized in the context of a settlement agreement, whether or not confidential.