Intellectual property

A strong brand is an undeniable competitive advantage. That's why the choice of a trademark and the registration strategy must be carefully considered from the outset.
 
A trademark is a distinctive sign that enables a company to distinguish the products and services it markets from those of its competitors.

To be valid, a trademark must be :
 
-distinctive: it must not be generic (i.e. it must not consist of signs or designations which, in current or professional language, are exclusively the necessary, generic or usual designation of the protected product or service) or descriptive (i.e. the trademark must not consist of signs or designations which may serve to designate a characteristic of the product or service, and in particular the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or rendering of the service). Distinctive character is assessed in relation to the goods and services designated when the trademark is registered. 
 
-lawful: it must not be contrary to public policy, and its use must not be legally prohibited.
 
-available: i.e. the trademark must not infringe prior rights, in particular :
 
=> an identical earlier trademark for identical goods or services
=> an identical or similar earlier trademark for identical or similar goods or services if there exists, in the mind of the public, a likelihood of confusion including the likelihood of association with the earlier trademark
=> a reputed earlier trademark, i.e. a registered or filed trademark known to the majority of the public (whether or not the goods or services designated by the earlier and later trademarks are identical or similar) and whose reputation extends widely on an international scale, where use of the later trademark without just cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trademark.
=> a well-known earlier trademark, i.e. a trademark that is not registered but is known to the majority of the public, in the event of confusion in the mind of the public (in the event of a conflict between similar trademarks or trademarks designating similar goods or services) or when use of the later trademark without just cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark (in the event of a conflict between a later sign designating goods or services different from those for which the well-known trademark is used).
=> a name or company name, if there is a risk of confusion in the public mind
=> a trade name, a sign or a domain name, whose scope is not only local, if there is a risk of confusion in the mind of the public
=> copyright
=> a third party's personality right, in particular his or her surname, pseudonym or image
 

 => Traditional trademarks :
 
-Word marks: made up exclusively of verbal elements (words, letters, numbers or other typographical characters) with no figurative elements.
 
-Figurative trademarks: made up exclusively of figurative elements (drawing, logo) with no verbal elements.
 
-Semi-figurative trademark: made up of figurative and verbal elements.
 
=> Other trademarks:
 
-slogan marks
-color marks
three-dimensional marks
-position marks
-pattern marks
 
=> New brands :
 
-sound and video brands
-olfactory or gustatory trademarks
 
Externalegal assists you in choosing the signs to be protected as trademarks, and in drafting the description of the protected goods and services using the Nice Classification.
 

 Third parties have a period of 2 months from publication of the trademark application in the Bulletin officiel de propriété industrielle (BOPI) to file an opposition, i.e. to oppose the application. Conversely, as the owner of a trademark, you have the right to oppose a trademark application if you consider that it infringes your prior rights.

 Clauses transferring intellectual property rights are frequently found in commercial contracts, and are subject to strict validity conditions laid down in the French Intellectual Property Code. The transfer of the author's rights is subject to the condition that each of the rights transferred is mentioned separately in the deed of transfer, and that the field of exploitation of the rights transferred is delimited in terms of its scope and destination, as well as its location and duration.
 
Our teams can help you with
 
- formalizing your contracts or clauses for the assignment of intellectual property rights.
 
- drafting and negotiating your intellectual property rights licensing agreements
 
- drafting trademark coexistence agreements