Protection and defense of trademarks in France, Europe and abroad

The trademark is generally the first rallying sign of customers and consequently one of the most valuable intangible assets of a company.

To be valid, a trademark must meet two main conditions, distinctiveness and availability.

A trademark will be considered distinctive when it makes it possible to distinguish your goods or services from the competition, and that it is therefore not only made up of a generic term to designate the goods or services in question, or their origin or quality.

Once this first analysis has been validated, it is a question of verifying whether an identical or similar sign has not already been registered by a competitor.

It is the object of prior art searches which make it possible to ensure, by studying different sources, that the brand is available and that you do not risk having to change brands during operation, which would seriously harm the value of your business.

Obstacles to registration can be many, such as:

The holder of an identical earlier mark registered for identical goods and services,
The owner of a similar trademark registered for similar products and/or services and with which there is a risk of confusion,
The company exploiting a well-known mark,
The holder of an exploited commercial name,
The holder of an exploited corporate name,
A copyright, protected designs and models,
The name of a local authority etc.

These obstacles may lead you to have to give up the initial project and file a new sign.

ETNA and its Trademark Lawyers and Industrial Property Consultants carry out hundreds of prior art searches per year, and assists you in the steps aimed at identifying the potential risks associated with the filing and use of a new trademark.

Trademark protection is conferred by an act of filing which must be made with an Intellectual Property Office in the territory concerned.

A trademark consists of a sign and a wording in the selected classes, i.e. registration confers a monopoly for a name or a logo, for specifically designated goods or/and services. It is therefore essential to carry out, prior to the filing, a reflection on the activity covered by the mark.

We propose a reflection by concentric circles: the first being the activity actually developed or envisaged at creation. The second circle covers possible diversifications in the short and medium term. Finally, the third considers activities that do not fall directly within the scope of the company's direct intervention, but which, if they were to be offered by a third party with a similar name, could create marketing confusion about the origin of the products. or services.

Once the sign and the products and services have been delimited, it is first possible to file a trademark with the INPI to obtain protection on French national territory, or directly with the EUIPO for protection on a European level. by the mark of the European Union.

It is then possible to extend a trademark through the international trademark system via WIPO, or to file with local offices for the territories of interest.

The filing strategy must take into account the economic development strategy of the company and the methods of exploitation or valuation.

The hypothesis of seeing a third party file a trademark identical or similar to that of your company is not uncommon. It is still necessary to be able to be informed in good time.

The establishment of monitoring makes it possible to be informed of the publication of similar marks and to be able to lodge an opposition before their registration.

An opposition is an administrative procedure taking place before the INPI or the EUIPO, and aimed at recognizing the risk of confusion between trademarks.

In the event that the time limit for forming opposition would have expired, it will always be possible to initiate, before the Office concerned, a procedure for cancellation which, as its name indicates, aims to have a mark already registered canceled in order to deprive the holder of his monopoly.

ETNA accompanies you in the implementation of a real protection and defense strategy adapted to the methods of exploitation and distribution of your products as well as to the new methods of counterfeiters.

Like any asset, the brand only has value if it is defended. It is therefore important to implement graduated defense strategies ranging from a warning to an infringement action, including a formal notice.