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Our trade mark services

Register your trade mark in France, in the European Union or anywhere else in the world. Adopt the right strategy to ensure the success of your projects and preclude others from copying your brand.

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We assist you at every step by ensuring that your trademark is available, by registering it, by managing any disputes that may arise with third parties, and by monitoring trade mark registries to ensure no one attempts to appropriate your trade mark.

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Clearance search

Our team assists you before launching a new product or a new brand in order to identify and minimise risks in terms of intellectual property regarding rights held by third parties throughout the world.

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​This process includes:​

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  • establishing clearance strategy adapted to your project

  • analysing the legal and commercial risks related to rights held by third parties

  • drafting an opinion on the availability of the considered sign

  • implementing a risk mitigation strategy if necessary

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​This process is highly recommended prior to filing a trade mark application or launching of a new brand or new product on the market.

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Trade mark filing

We support our clients in securing their rights by filing French trade marks at the French trade mark office (INPI), European Union trademarks at the European Union Intellectual Property Office (EUIPO) and international registrations at the World Intellectual Property Organization (WIPO).

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​We also cooperate with a network of carefully selected local experts abroad to be able to assist you in the filing and management of your trade marks around the world.

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​Our services aim to support you throughout the life of your brand and include:​

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  • the analysis of our clients' activity and legal needs 

  • the proposal of a bespoke specification of goods and services to align the protection of the trade mark with the current and future activities of its owner

  • the study of possible obstacles to the registration of the trademark (whether it is contrary to public order, descriptive, etc.)

  • the filing of the trade mark application 

  • the drafting of responses to potential registration refusals

  • the monitoring of the publication and registration of the trade mark

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​Of course, we also play an intermediary role with our local experts abroad so that you benefit from the best quality of service as well as to ensure the defense of your interests in your proceedings all around the world.

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Litigation and pre-litigation work

Our team specialises in the practice of litigation and pre-litigation in trademarks. We support our clients in all litigation proceedings before the French trade mark office (INPI) and before the European Union Intellectual Property Office (EUIPO), both within the framework of oppositions against trademark applications and of cancellation and revocation actions against registered trade marks.

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​We also cooperate with a network of local experts around the world recognized for their competence in order to best defend your interests abroad in the event of litigation or pre-litigation with third parties.

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​To support you in litigation or pre-litigation cases, we offer in particular:

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  • to assess the chances of success beforehand and to formulate a strategy accordingly

  • to contact the opposing party and to carry out the negotiations on your behalf 

  • to complete and submit all the necessary forms in opposition as well as in cancellation or revocation actions 

  • to write all the legal briefs and other legal writings as part of your opposition and cancellation or revocation actions, both as plaintiff and in defense

  • to gather and organise with your assistance the evidence demonstrating the genuine use and/or of reputation of your trade mark on the market

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​With several years of experience and more than a hundred procedures before the French and the European trade mark offices, our team is capable of managing large-scale litigation and pre-litigation, including those involving a significant number of parallel procedures.

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Managing and monitoring your trade marks

We offer a complete range of services to assist you in the management and monitoring of your trade marks throughout their life cycle:

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  • operating recordals for your trade marks (assignments, changes of name or address, securities, licenses, etc.)​

  • monitoring and renewing your expiring trade marks

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​As your activities and your legal needs evolve in time, we are also available to assess the relevance of your trade mark portfolio, to update your intellectual property strategy and to take the necessary measures to implement it.

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The primary goal of our specialists is to resolve disputes in a manner that is as fast, as effective and as inexpensive as possible. Obtaining a binding decision from an industrial property office should always be a last resort solution - this is why we always favor amicable solutions, in accordance with the ethical obligations of French Trade Mark Attorneys. 

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​We have developed a real expertise allowing us to quickly identify the proposals that are most likely to enable an amicable outcome to a trade mark dispute.

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​We put this expertise at your service and offer you:

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  • ​to assess the chances of success beforehand and to formulate a strategy accordingly

  • to identify and submit to you the elements likely to lead to an amicable solution

  • to contact the opposing party and to carry out negotiations with them on your behalf

  • to draft the agreement solving the dispute while defending your interests

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​Thanks to our know-how in this area, more than half of the disputes handled by us have been settled, allowing our clients to save significant time and budget and to enjoy an increased legal security regarding rights held by third parties.

Coexistence agreements and settlements

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Trade mark watch

We monitor official registers to ensure that no third party appropriates your brand or attempts to register a trade mark that is too close to yours.

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​In order to effectively monitor your trade mark, we offer:

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  • ​​to develop a tailor-made monitoring strategy determining the most appropriate geographic coverage and records to monitor

  • to analyse the watch notices and alerts received (brands, designs and models, company names, domain names, etc.) and to determine whether any action should be taken

  • to take action if appropriate

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​Monitoring your brand is a key aspect of its protection. It is essential to protect yourself against potentially malicious third parties and to preserve the specificity and uniqueness of your brand.

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CONTACT US

 

58 rue de Monceau, 75008 Paris

Contact us by phone, email or through the form below to make an appointment or obtain legal advice.

Thank you for your message.

  • 2991148

© 2023 Cabinet Willaert

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