Key contact: Pascal-André Gérinier (Lawyer - Founder)
The trademark is a key tool in business life: it allows your customers to identify your products and services, and helps you fight competitors seeking to create confusion. It is a valuable intangible asset that should be protected from the moment your company is formed.
MOSAIK assists companies throughout the life of their trademarks: strategy, filing, enforcement and exploitation, in France and internationally.
Checking before filing
A trademark filing is only worthwhile if the sign is available (it does not conflict with third-party rights), distinctive (it does more than describe the product) and lawful. Yet the earlier rights that may stand in the way of your project are numerous: identical or similar registered trademarks, well-known marks, trade names and company names in use, copyrights, designs, names of public entities.
The firm conducts a clearance search in the relevant territory and analyzes the results: likelihood of phonetic, visual or conceptual confusion. Before spending anything, you know whether your project can succeed and what risks you are taking.
Building the filing strategy
A successful filing is prepared by answering a few structuring questions: what type of mark should be filed (word, figurative, semi-figurative)? For which goods and services? In which territories? With what budget? Is the mark intended to generate royalties?
MOSAIK then drafts the specification of goods and services so as to maximize your protection: a trademark is only protected for what appears in its registration. The firm files before the INPI (the French trademark office) for France, the EUIPO for the European Union or WIPO for international filings.
Defending the filing and watching the mark
Even a well-prepared filing can draw objections from the INPI or an opposition from a third party. MOSAIK represents you in these proceedings: responses to office actions and briefs in reply to oppositions, before the INPI, the EUIPO and the courts specializing in intellectual property.
Once the trademark is registered, the firm sets up watch services to detect filings and uses of similar signs, and takes action as soon as an encroachment is detected: formal demand letter, opposition, infringement action.
Filing or responding to an opposition before the INPI
When a third party files a sign similar to yours, you have two months from the publication of its application to file an opposition with the INPI. Since the 2019 reform, an opposition may be based not only on an earlier trademark, but also on a company name, a trade name, a shop sign or a domain name, where there is a likelihood of confusion.
MOSAIK watches your trademarks to detect these filings in time, drafts the opposition brief and conducts the examination phase. Conversely, if your own application is opposed, the firm drafts your observations in reply and negotiates, where useful, a coexistence agreement that saves you from losing your trademark.
Infringement: acting fast, including at customs
A competitor copies your trademark, a website sells imitations, a container of counterfeit goods arrives in Le Havre or at Roissy airport: each situation has its answer. MOSAIK sends the formal demand letter, carries out the infringement seizure (saisie-contrefaçon) to secure the evidence, brings the infringement action before the judicial court, and obtains an injunction, the destruction of the goods and compensation for your loss.
The firm also files an application for action with the customs authorities on your behalf. Suspect goods are then detained at the border, and you have ten working days from notification of the detention to confirm the infringement and take action, or to obtain their simplified destruction. This interplay between intellectual property and customs law is a regular practice of the firm.
Exploiting and monetizing your portfolio
A registered trademark becomes an asset to be managed and monetized. MOSAIK drafts and negotiates the agreements that govern its exploitation: license agreements, assignments, co-ownership agreements, coexistence agreements, security interests. The firm records these agreements with the competent offices to make them enforceable against third parties, and assists you in managing your portfolio internationally, working with its Hong Kong and Mexico City offices.
Trademark licenses and software licenses
A well-drafted license turns your trademark into a source of income without making you lose control of it: territory, term, exclusivity, royalties, quality control of the products, fate of the license if the licensee is sold or defaults. MOSAIK drafts and negotiates your trademark licenses, as well as your software licenses, together with its digital law team, and records the license in the National Trademark Register to make it enforceable against third parties.
Protecting your trademark in Hong Kong and Asia
A French or European Union trademark does not protect you in Hong Kong: a separate filing is required there, before you sell your products or look for a distributor. From its Hong Kong office, MOSAIK coordinates the filing, watching and enforcement of your trademarks in Asia, in French, English and Chinese, and likewise assists Hong Kong companies wishing to protect their trademark in France and in Europe.
Frequently asked questions
Can I file my trademark myself?
Filing online is easy; the risk lies elsewhere. Without a serious clearance search and a well-drafted specification, you may file a mark that is unavailable or poorly protected, and official fees are not refunded if an opposition succeeds. Working with a lawyer secures both the filing and the strategy around it.
Is my trademark protected worldwide?
No. A trademark is protected in the territory for which it is registered: France (INPI), the European Union (EUIPO) or the countries designated through WIPO. Your filing strategy should follow your commercial strategy, market by market.
What should I do if a competitor uses a sign similar to mine?
You must act, or risk seeing your trademark weakened: a formal demand letter, an opposition if the sign was recently filed, or an infringement action before the specialized courts. A trademark watch service detects these encroachments in time.
What is the deadline for opposing a trademark before the INPI?
Two months from the publication of the application in the Official Industrial Property Bulletin (BOPI). After that, the only route left is an invalidity action, which is longer and more expensive. Hence the value of a trademark watch service, which alerts you as soon as the application is published.
How can I have counterfeit goods blocked at customs?
By filing an application for action with the customs authorities, valid for one year and renewable, which describes your trademarks and your genuine products. When customs officers detain suspect goods, you are notified and have ten working days to confirm the infringement and bring an action, or to obtain the destruction of the goods with the consent or silence of their holder.
Does my French trademark protect me in Hong Kong?
No. Trademark protection is territorial: the mark must be filed in Hong Kong, with the local registry. Our Hong Kong office takes care of this and watches competing filings.