Trademarks – Designs

A wide range of services

We provide our clients with a full-service offer in terms of trademarks and designs both in transactional and litigation cases.

  • Anti-piracy is at the very heart of our trademark and design activity. In this respect, our clients regularly consult us in order to:
    • Stop the marketing of counterfeit products on online commerce sites.
    • Retrieve domain names that had been usurped by third parties (cybersquatting).
    • Implement anti-piracy programmes in collaboration with the customs authorities, with which we have developed good relations.
    • Protect the interests of our clients implied as defendants in counterfeiting proceedings, including in assisting them during the seizures performed in their premises and in invalidity or forfeiture proceedings.
  • With respect to the structuring of intangible assets, we advise our clients in the following transactions:
    • Purchase/assignment of companies or business (including due diligence and audit of trademark and design portfolios).
    • Marketing of their products or services (partnership agreement, co-branding, franchise and marketing).
    • Valuation of their assets (acquisition of rights and their securing, assignment agreements, licence agreements, coexistence agreements, audit and management of trademark portfolios worldwide – see below).
  • Our profound knowledge of our clients’ professions in sectors such as media, information technology, health, construction and property development, communication and leisure activities enables us to manage their intellectual property in their best interests and, more particularly, to optimise their trademark portfolio. Such optimisation consists in being selective with regards to registered trademarks, as well as the products and services covered. Rationalisation also takes into account the corporate and tax aspects of the location of portfolios (holding companies, operational companies…) according to the clients’ assets, distribution or licencing policy. In this respect, we offer active portfolio management services consisting in:
    • Auditing existing portfolios in France and abroad.
    • Performing senior and availability searches for contemplated signs.
    • Registering French, European and international trademarks as well as national trademarks abroad and managing the offices’ objections.
    • Updating trademark registers according to the company’s development and registering deeds pertaining to enjoyment and ownership instruments.
    • Dealing with oppositions at the National Intellectual Property Institute and the OHIM.
    • Carrying out use searches and awareness surveys.
    • Conducting all litigation proceedings relating to these trademarks.

 

We rely on a non-exclusive tried and trusted network of foreign law firms benefiting from detailed knowledge of proceedings and markets and we make sure that the service provided complies with our clients’ expectations. More particularly, we monitor all litigation proceedings.

 

Trademark and design law is historically a core activity in our law firm.

Our cross-practice approach and our project management method of working, providing multiple expertises to manage one case, enable us to comprehend from a cross-practice perspective the trademark or design issues faced by our clients. Such organisation enables each lawyer to intervene all along a trademark’s or design’s life cycle both in transactional and litigation aspects. Our clients therefore benefit from our wide practical experience.

 

We are regularly cited in reference rankings such as Chambers and Partners, The Legal 500, WTR1000 and Décideurs.

 

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