15.03 – Trademarks and designs – JAP


Trademark and design law has been one of the Firm’s main activities for more than 20 years, it being said that we act as counsel for holders of trademarks and designs that are particularly well known in Europe, in the most varied sectors: trucks, motorcycles, wines, comics, gastronomy, cultural institutes, universities, etc. Some of these clients have trusted us for over 20 years to protect and defend their intellectual property rights in France and Europe.

We offer our clients a complete and transversal service, combining our expertise in advice and litigation:

  • by filing your trademarks and models with Intellectual Property Offices;
  • by advising you on the exploitation of your intellectual property rights (negotiation and drafting of licenses, assignment, co-branding contracts, etc.);
  • and by defending your trademarks and models both in the event of infringements committed online and in the context of administrative litigation before the Intellectual Property Offices (opposition, revocation, invalidity proceedings, etc.) or even in the event of judicial or extrajudicial litigation (infringement action, unfair competition action, arbitration, etc.).

Obtaining trademarks and designs

  • trademark clearances;
  • analysis of the validity of the signs and designs to be filed;
  • filing and prosecution of trademark and design applications before the National Institute of Industrial Property (INPI, French trademarks and designs);
  • filing and prosecution of trademark and design applications before the European Union Intellectual Property Office (EUIPO, EU trademarks and Community designs);
  • filing and prosecution of trademark and design applications before the World Intellectual Property Organization (WIPO, international trademark applications and international registrations of designs);
  • filing and prosecution of trademark and design applications before foreign Intellectual Property Offices (USPTO, UKIPO, JPO, KIPO, etc.).

As a French law firm, we have extensive experience in filing, before the INPI, applications for French trademarks and designs.

This is also true in EU matters, our Firm being able, as such, to rely, if necessary, on the resources of the law firm Sènakpon Gbassi et Associés, which is our correspondent based in Alicante, Spain, where EUIPO’s headquarters are located.

Finally, our Firm, thanks to its local correspondents, can easily help its clients to file trademark and design applications abroad, particularly in the United States, Japan, South Korea and China. As such, we can easily communicate with our correspondents and inform our clients of any objections that may be raised by the Intellectual Property Offices of the United States, Japan, China and/or South Korea, it being said that our Firm is composed of lawyers coming from these three later countries or who are admitted to the California Bar or the Tokyo Bar.

Management of your trademarks and designs

  • registration with the registers of the Intellectual Property Offices of changes affecting your intellectual property rights, in particular in the event of assignment or license;
  • renewal of rights;
  • extension of your international registrations, etc.

Exploitation of your trademarks and designs

  • negotiation and drafting of transfer, license and co-branding agreements;
  • negotiation and drafting of brand coexistence agreements, particularly in connection with the amicable resolution of disputes;
  • negotiation and drafting of partnership contracts with influencers.

Customs surveillance, audit of infringements of your trademarks and designs, and protection on the internet

  • submission, follow-up and renewal of requests for customs action. This procedure aims to request the detention of goods suspected of infringing one or more intellectual property rights. It draws the attention of French Customs to suspicious products and facilitates their interception at the borders. This is a preventive approach that can be taken even if the right holder is not aware of acts of infringement of its trademarks and/or designs;
  • audit of infringements of your trademarks and designs on websites, online marketplaces, social networks, etc.;
  • launch and follow-up of UDRP, Syreli or other procedures in order to request the deletion of a disputed domain name; request for removal of illegal content on websites, online marketplaces, social networks, etc.

Administrative litigation

  • opposition proceedings before the French Trademark Office (INPI) or the EUIPO in order to prevent the registration of a French trademark application or an EU trademark application which infringes your prior rights (types of prior rights: registered trademark, corporate name, domain name, a protected designation of origin, etc.);
  • revocation or invalidity proceedings before the INPI or the EUIPO.

Judicial litigation, arbitration and mediation

Acting for leading French and global brands, our Firm advises on everything from trademark infringement and unfair competition claims through to design protection and enforcement and online infringements. As a result of the global nature of trademarks, designs and disputes, we have built up strong relationships with IP lawyers working in other countries and regularly take the lead role in cases across multiple jurisdictions.

We can represent clients in all forums, ranging from litigation in the Tribunal Judiciaire of Paris (which has exclusive jurisdiction for the whole of France in case of acts of infringement of an EU trademark or Community design committed by a French defendant), in other French tribunaux judiciaires, French courts of appeal and the General Court and the Court of Justice in Luxembourg.

Complementing this deep understanding of the French and European courts, we recognise the importance of alternative dispute resolution methods. In this juncture, we can handle mediation and arbitration proceedings, especially before the International Court of Arbitration (ICC) which is the world’s leading arbitral institution and which is located in the center of Paris.