Trade - Real estate

Brand portfolio management

Trademarks are a key tool in business life, enabling your clients to identify your products and services, as well as fighting off competitors who may wish to confuse their services with yours.

It is an essential asset that should be deposited as soon as your company is created.

A lawyer is an essential partner in determining the best filing strategy for your company, and above all in limiting the risks and difficulties involved.

In fact, the registration of a trademark is only lawful if it complies with the following conditions in particular:

  • be available (not infringe the rights of third parties) ;
  • be distinctive (not simply describe a feature);
  • be lawful and not contrary to public decency

Moreover, registration is no guarantee of validity, and third-party rights can be difficult to identify , given the sheer number of them. For example :

  • identical or similar trademark already registered for identical goods and services,
  • well-known or reputed trademark
  • trade name used
  • company name
  • copyrights
  • protected designs,
  • The name of a public entity (local authority, country, etc.)
To assess these risks, the firm conducts a prior art search in the territory concerned, and analyzes the results obtained to determine whether there is a risk of confusion on the phonetic, visual or conceptual level.

The process should enable you to determine whether or not your proposal can be registered as a trademark, and the risks involved.

You should also think carefully before filing your application, in order to optimize its relevance as much as possible, and to limit costs. Indeed, in the event of an objection, the costs associated with your application will not be reimbursed. In the event of an objection, the costs associated with your request will not be reimbursed.

In this respect, we should ask ourselves:

  • What type of trademark do I want to register? Terms (word trademark)? an image (figurative trademark)? a logo (semi-figurative trademark)?
  • What products and/or services will the brand offer?
  • Where do I want to offer these products and services?
  • What's my budget?
  • Do I want to pay myself royalties through the brand?
  • What is my international brand management strategy?
Once these parameters have been determined, and the choice of trademark has been validated, the firm proceeds with registration with either the Institut National de la Propriété Industrielle (INPI), the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO).

The firm will determine the best possible wording for the goods and services to be protected, in order to maximize your protection (a trademark is only protected for the goods and/or services for which it is registered, not for the goods and services for which it is used).

Trademark registration is subject to payment of a fee calculated as follows in 2023:

However, there is no certainty when it comes to filing, and even with the best measures, INPI may request modifications or a third party may oppose the application.

MOSAIK can support you in your dealings with INPI to demonstrate that your registration complies with the conditions imposed by the law.

MOSAIK also assists you in drafting briefs in response to oppositions filed by third parties, before the INPI, the EUIPO and the INPI's specialized intellectual property courts (Judicial Tribunal, Court of Appeal, etc.).

Once the registration has been validated, the trademark becomes a valuable intangible asset, which can be the subject of transactions and agreements that must be formalized in writing and, if possible, published on the INPI registers so that they can be enforced against all parties:

  • Brand licensing contracts
  • Sales contract
  • Undivided agreement
  • Coexistence agreements
  • Pledge agreement

The firm also registers these deeds with the relevant bodies (INPI, tax authorities, etc.) to give them full force vis-à-vis third parties.

MOSAIK can also help you protect your assets from third parties, by setting up surveillance systems to ensure that no third parties come to harm your assets.

Once these infringing acts have been detected, MOSAIK assists you in the process of protecting your trademark by initiating all pre-litigation (formal notice) and litigation procedures:

  • Opposition at INPI
  • Opposition before the EUIPO
  • Assignment
  • First Chairman's motion
  • Request for authorization to take precautionary measures
  • Counterfeit seizure
  • Injunction to do
  • Preventive or conservatory measures before the pre-trial judge

The firm can also favour amicable solutions by proposing Alternative Dispute Resolution (ADR):

  • Conciliation
  • Mediation
  • Arbitration

The aim is to help you reach the best possible agreement, formalized in a settlement agreement that may or may not be confidential.