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  • Skills

    Advise, Protect, Promote, React


    @MARK :

    • Assists, advises and represents its clients for the registration, the protection, the defense, the exploitation and the development of their Intellectual Property rights in France, in the European Union and around the world through a network of local partners.
    • Performs an audit and determines, in close relationship with its clients, the protection strategy (choice of products and services, selection of corresponding classes, territorial scope …) most suited to their current and future objectives, taking into account legal and economic requirements.
    • Conducts prior rights searches to ensure the availability of the title to be protected, to study the risks at stake and to determine the possible solutions.
    • Keeps track of administrative procedures for filing and registration in France, European Union and worldwide. It offers solutions to overcome the obstacles encountered in these procedures.
    • Writes all types of acts affecting intellectual property rights (total or partial transfer of ownership, exclusive licenses or not, coexistence agreements, confidentiality, ownership, transfer of know-how, etc.) and makes the corresponding recordals on official registers.
    • Sets up in France and abroad, all kinds of watches, including customs, to monitor the market for its clients and to react quickly.
    • Resolves, amicably before the Administration, or through a litigation before French Courts, any conflicts that may occur.

    In this respect, @MARK conducts an analysis of risks, files opposition procedures and pursues legal action to enforce its clients’ rights.

    Our job is to help our clients to build up portfolios of intellectual property rights and enforce them according to the desired business strategy.

    ADVISE

    @MARK assists, advises and represents its clients for the registration, the protection, the defense, the exploitation and the development of their Intellectual Property rights in France, in the European Union and around the world through a network of local partners.

    PROTECTION

    @MARK performs an audit and determines, in close relationship with its clients, the protection strategy (choice of products and services, selection of corresponding classes, territorial scope …) most suited to their current and future objectives, taking into account legal and economic requirements.

    REACTION

    @MARK resolves, amicably before the Administration, or through a litigation before French Courts, any conflicts that may occur.In this respect, @MARK conducts an analysis of risks and the chances of success, files opposition procedures and pursues legal action to enforce its clients’ rights.

    ADVISE

    1. Why do a prior rights search?

    A prior rights search can check whether the sign chosen is available or has already been filed by a third party to designate identical or similar goods or services. The research is particularly necessary since it is not carried out by INPI in France as part of the trademark filing process. Research is needed because the legal and financial consequences can be significant if you adopt (and a fortiori use) the name of a trademark already filed.

    2. What are the blinding anteriority?

    Several searches should be conducted because the following earlier rights (under certain conditions) can be opposed to a trademark :

    • An earlier trademark,
    • A well-known trademark,
    • A corporate name, a trade name or a sign,
    • The name of an association or a local entity,
    • An Internet domain name,
    • A copyright,
    • An appellation of origin.

    3. A search on the Internet can be enough?

    Certainly not because this type of research is more like a survey and it is never exhaustive as it does not appear the similar trademarks. The databases are not always very reliable and even less up to date!

    4. The review of the INPI’s lists is enough?

    Certainly not because the trademarks mentioned in the list do not appear the names of the holders, the filing dates, figurative elements, precisely the products and services claimed, the seniority of the filing, total or partial write-offs, etc. : As much information necessary to analyze the alleged prior rights and to give a legal opinion.

    5. What are the limitations of prior rights searches?

    Unfortunately some earlier rights are not accessible and are not listed on databases and official publications, including:

    • some trade names unregistered with the Trade and Companies Register (the right to the trade name arises from the use and not the filing),
    • the names of Associations (registered with the Prefecture which they depend)
    • copyrights names (eg the title of a movie, a song, a character from a book or a comic, etc.); these existing rights without any need to deposit,
    • rights of personality (right to the name, image rights, etc.).

    6. What can you do if an identified trademark was registered more than five years ago?

    This information is crucial because a trademark which was not exploited in France in the course of last five years is likely to be deposed for defect of exploitation and it is then opposable no more legitimately to later trademark. An inquiry of usage led by a specialist in such investigations is intended to prove this point. When a trademark was not used, it is necessary to draw juridical conclusions from it…

    7. How to overcome an obstacle identified during a research?

    Everything depends on facts of kind but several lanes must inevitably be explored:

    • Can we sign an agreement of coexistence with the holder of the previous mark?
    • Can we acquire a trademark completely or partly?
    • Can we sue for failure to exploit the trademark in question?

    8. What assurance do I get through a specialized in Intellectual Property Law Firm?

    The lawyer commits his professional responsibility in making a consultation and it is also ensured by a mandatory financial security as such. Our role is to advise you and tell you: yes, no or yes but under certain conditions. This is a perilous exercise that only a lawyer is able to make.

    9. How to assess the likelihood of confusion between two marks?

    This is the “art” of our business and one of its charms because you have to be constantly informed and daily trends in case law, similar decisions by the National Institute of Industrial Property, the French courts and their community counterparts.

    10. What is the cost of a complete search?

    It is reasonable particularly with regard to costs for marketing and communication often associated with the trademark, the considerable risks that are taken using and / or filing, consciously or not, a trademark identical or similar to that of third.

    @MARK offers a complete trademark search (French trademarks, Community and international trademarks designating France), among the company names and Internet domain names.

    Abroad, the problems are the same but the costs can be significant, so by using research called “sweeping” it is possible to have quick and accurate review of the environment of a trademark…

    Do not hesitate to consult @MARK for details.

    Conclusion: It is necessary to conduct comprehensive prior rights searches before filing and using a distinctive sign because the stakes are high and the real risks including financial in case of administrative and / or judicial proceedings. It is a matter for specialists due to the technicality of the matter and to control multiple parameters to analyze the obstacles identified.

    Valuation

    Your trademark has value: how much do you think it is worth?

    Intangible assets including trademarks have value and even some value but when it comes time to give a figure for this type of intangible property, the difficulty is important. For some, the value of a brand is a cyclical share, the other subjective due to the increasing number of possible criteria that can be defined. For others, its principle is even rejected as how to value an intangible asset!

    Yet methods do exist, and their reliability is affirmed and recognized.

    • The cost method is to identify the expenses for the creation of the brand, for its protection, maintenance, development. The problem with this method is that it does not take into account the erosion of time, the lack of connection with the benefits that can be expected from one who operates the brand. It therefore applies to “weak” marks stiff competition or circumvented…
    • The reference to the market is another method of seeking the price for which such asset is sold or leased in the market (fee proportional to revenues which are assigned a coefficient corresponding to the duration of the license…). The limit of this method is the high variability of the license fee rates (between 2 and 10% is not the same value!).
    • The valuation results is to seek the financial impact of the use of the mark on the product. So we try to identify the “+” product provided by the mark in relation to the same product sold without a One can thus compare sale prices, margins, etc. Count course is held in communication costs.
    • The sharing of results between the assets necessary for the operation of the trademark can be concluded that on average laid-off a result of 20% before tax which they pay an average fee of 5%: the fee amounts to transferring owners of intellectual property rights 5% 20% or 25% of income before taxes. This is one of the possible values of the trademark.
    • The profitability of trademarks value is the present value of income attributable to them, which implies defining projections and the risk level of these forecasts. It takes into account the competition, the image of the trademark, its strength, its singularity. It analyzes the legal situation and the corresponding risk, its distinctiveness, its territorial scope, its operating area, its extrinsic validity and possible fame.

    This is only an overview of the main methods for determining the value of a brand. There are others. You can also combine them. Finally, determine the value of a trademark is not easy and it is a matter for specialists, because each case is different.

     

    Audit

    The audit able IP effectiveness of intellectual property policy in relation to its needs.

    This is an analysis that takes into account the internal components to the company (commercial policy, strategy development …) and external factors (competition, legislation, local constraints …).

    The aim is to optimize its IP strategy both offensively (infringement actions, communication on its rights …) and defensively (licenses granted to third parties, partnerships …).

    Your counsel will help you upstream to implement a real policy of intellectual property and thereby instilling an intellectual property culture, followed downstream by assisting you in the management of protection formalities, in preparing contracts operating in the defense of your rights.

    According to our experience an audit shall be conducted every five years.

    How to optimize the management of its brands with the assistance of a counsel in intellectual property?

    Protection in France and abroad:

    • Check availability of signs (trademarks, domain names, company names, etc.)
    • Define who will be the trademark owner (natural person, legal person)
    • Ensure the validity of the sign (not descriptive, distinctive, )
    • Define the wording of the most suitable products and services and the most reliable legal
    • Complete protection for the reservation of one or more Internet domain names
    • Choosing the best formula to deposit abroad (OHIM, WIPO, OAPI, etc.).

    A good management :

    • Anticipate filing as soon as possible to allow its brand to “grow” by collecting the information arising from the publication (third reaction);
    • Regularly inventory of rights (strengths and weaknesses);
    • Do not renew the brands that no longer of interest;
    • Enhance their rights by granting such licenses;
    • Use its trademarks to avoid actions for revocation;
    • Monitor the time (not just that of renewal);
    • Establish contracts that accompany the use of the mark.

    A good organisation :

    • Define a strategy;
    • Train your team (marketing, legal, etc.) to IP;
    • Bringing in the company a IP culture;
    • Communicating on its IP portfolio;
    • Set shortand medium term objectives;
    • Monitor the competition;
    • Regularly conducting a legal and financial audit of all of its portfolioin order to calculate the return on investment from intellectual property;
    • Assessits trademarks in particular to new partnerships, transfer or contribution …
    • Be aware of the value of his rights.

    Manage its trademarks so do not just drop but build and renew a policy and strategy, developed with his council to master all the sometimes complex and technical aspects of each file.


     

    Recovery in managing a portfolio of trademarks

    Is it complicated? Is it long? Is it expensive?

    These are the questions legitimately raised by a client which is not satisfied with the management of its intellectual property rights and plans to entrust it to a new provider. Of course, the answer is no, even if in practice the transfer of power can be more or less good will …

    This is primarily a common practice because the portfolio transfers are frequent. Sometimes it’s to group IP rights within the same firm for a more harmonious management, sometimes it’s because two companies merged and the board of the acquiring company took over the management of the combined company …

    How is this happening in practice? Just inform the former counsel in charge of the records of our decision by asking a state of rights with the closest deadlines, a statement of current files and the names of foreign colleagues in charge of national deposits.

    The transfer is immediate and has the following major advantages:

    • Audit of Intellectual Property Rights with a new analysis from the one who discovers and analyzes what has been done over time and what remains to be done;
    • Portfolio Update (as of short comings or improvements that unnecessary elements or irrelevant in law that should be eliminated);
    • Optimized and modernized management of Intellectual Property Rights.

     

    Why to license trademarks, designs, patents?

    Here is some food for thought:

    • To consolidate his rights in a country or in a field of activity;
    • To receive fair royalties proportional to the revenue generated by the licensee;
    • To promote your IP rights abroad (without heavy investments for the owner);
    • To control the products / services of the licensee;
    • To validate the use ofits brand and avoid actions for revocation;
    • To diversify its business through licensed products;
    • To conduct in fringement actions together with the licensee and thus reduce the cost of defending its rights;
    • To enjoy the investments of the licensee (and thus limit its own investments: structures, personnel, communication, promotion, implementation, logistics, etc.).

    The trademark license may be exclusive or not, it is limited in time, it must concern in the European Union as a whole theory, it is subject to prior registration of the trademark in the country in question …
    Do not hesitate to contact your council to develop, verify, audit your IP license agreements.

    The @MARK team is at your side to carry out any kind of negotiation regarding your intangible assets including your marks, your designs, your Internet domain names, your patents…

    Whether in an amicable environment, or more conflictive and even judiciary, @MARK has made a specialty of the most difficult negotiations for over 15 years now.

    For example, you detect the use of a mark identical or similar to yours (!) The best solution may not be the frontal conflict, any more than do nothing but third way: The negotiation.

    It is clear that in general, a number of trial ending in a transaction following a negotiation. Hence the need to be accompanied by people who have the habit, reflexes, “tricks” because a good negotiation requires particular expertise, skills, psychology, listening.

    All qualities that we were able to implement for our clients for over 15 years.

    The management of litigation in Intellectual Property:

    The scheme is classic: a client becomes aware of an infringement or because it systematically monitors trade marks, designs or patents filed by third parties, either because the information is lift by its sales department.

    What to do?

    Here are some tips:

    • Make an audit of its own rights and as certain what rights the third party in question have to be sure to dispose of the oldest rights and not befaced with a very delicate situation to handle backlash;
    • Send a formal notice to the other party requesting the immediate cessation of exploitation prejudicial to his rights, the origin and extent of the alleged infringement and compensation for if possible to repair the damage suffered and at least to reimburse the costs incurred to defend its legitimate right.
    • Make opposition to registration of the trade mark rights of the other party if a trademark application has been made and published;
    • Get a bail iff report to as certain the reality of counterfeiting or imitation on the Internet or in a shop;
    • Finally, take legal action before the competent court knowing that the procedure can be stop at any time, including at the eve of pleadings !

    But of course everything is played on a case by case basis depending on the opponent, in its defense, the willingness or not to negotiate on both sides …

    Should we take too firm stance at the risk of the procedure last? Should we instead prefer a “bad deal” rather than a “good trial”?

    These questions must find answers through experience of @MARK on the matter.

    PROTECTION

    Why a Community trade mark?

    1. What is a Community trade mark?

    This is a valid one brand for one area namely the 28 countries of the European Union. This brand has a unitary character and can in no way be divided – it gives the holder an exclusive right throughout the territory of the European Union. The mark is valid for 10 years, renewable indefinitely for identical periods. It exists since April 1st, 1996.

    2. What are the countries covered by the Community trade mark?

    To date, 28 countries are: Germany, Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Spain, Estonia, Finland, France, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia, Slovenia and Sweden.

    3. What are the advantages of the Community trade mark?

    The benefits are now well known:

    • The protection of the mark is the same in each country of the European Union (whether the mark as such, the goods and services claimed or its owner) ;
    • There is only one file to manage a single application, in one language …
    • It is possible to claim priority of an existing national brand within 6 months;
    • It is also possible to claim seniority of strictly identical trademarks in one or more countries of the European Union, thus ultimately to have only the CTM and give up its national trademark without losing the committed prior to its deposits;
    • An automatic extension of already registered trademarks is provided so that the marks are already protected in the accession countries ;
    • The judgments obtained before a court competent Community trademarks are applied throughout the European Union.

    4. What are the disadvantages of the CTM?

    The disadvantages are :

    • Because of its indivisibility, the Community trademark cannot exist and be valid if an obstacle has appeared in one of the countries of the European Union: for example, if a company opposes its German trade mark previously filed and that it is successful, the Community trademark shall not be registered and the only possibility is to transform the Community trademark into national trademarks with payment of the corresponding conversion charges;
    • Some countries bordering France are not part of the EU, for example Switzerland, and protection in such countries requires to perform either a separate national deposit, one international trademark registration designating that country …
    • The procedure is quite long (between 18 and 24 months) and quite technical;
    • It is now possible to designate the European Union as part of an international trademark registration procedure (Madrid Agreement and Protocol), but this is not without risks …

    5. Why file a CTM?

    To have a single valid trademark throughout the European Union to consolidate its ancient deposits in one or more countries and make only one renewal at maturity of the brand, to reduce management costs rights in Europe….

    6. What is the cost of a CTM?

    The cost of a CTM are divided into two phases (a deposition process and a registration procedure, noting that since May 1st, 2009, official registration fees were eliminated, reducing the cost of about 25%):

    • The filing of the trademark application in one to three classes
    • Monitoring of the publication process and the trademark registration (including in the form of objection and receiving answers, checking and sending the official title) at the end of the procedure is approximately 6 to 9 months after the filing date.

    Our prices do not include the costs and fees to consecutive any problems encountered during the procedure since they can not be known in advance (substantive objections of the administration and / or oppositions brought by third parties on the basis of prior rights).

    For information, the overall budget of a CTM (filing fees, registration, management @MARK) is HT € 0.92 per month per country !!!

    7. Internet and the European Union

    The .eu extension is now open to all citizens of the European Union, without any other conditions to fulfill if it is its availability … But as often is the rule of “first come first served applies” !

    Conclusion: The Community trade mark since 1996 met a huge success that leaves no one indifferent and deserves special attention – the filing of a Community trade mark is in most cases advisable for new rights or to consolidate old trademarks in one or more countries of the European Union – it is undoubtedly an opening on a single market and growing due to the steady expansion of the European Union.

    The match Community trademark / International trademark

    Regularly, when one wishes to extend the protection of its trademark abroad, under French priority of a trademark filing or not, the question arises of whether it is better to file a Community trade mark or an International trademark.

    What are the main advantages and disadvantages of each system:

    The Community trademark :

    + :

    • A uniform and equal protection in the 28 countries of the European Union (a unique brand with a unique label for one area)
    • A single filing to manage and renew
    • Once registered, the trademark is difficult to contest since the use in one country suffices to prevent the downfall for the entire trademark.

    – :

    • A long procedure (about 12 months) and too often random
    • One obstacle in one of the 28 countries of the European Union is sufficient to block the registration of the Community trade mark thus requiring the payment of conversion fees (often very high) into national trademarks
    • The lack of protection in the TOM (Overseas Territories) and in countries such as Switzerland

    The International trademark  :

    + :

    • A flexible system to protect its trademark from a list of more than 90 countries including Europe, USA, Israel, China, Japan, Singapore, Australia, Sweden, Norway, Cambodia, etc.
    • A system to retain only a few countries initially and then later to complete the protection by subsequent designations
    • A system to obtain the trademark in a number of countries in which no review procedure is provided
    • A central filing and a single renewal for a lesser cost protection in many countries (though legally, it corresponds to as many national trademarks as there are countries covered)
    • A flexible system also during the registration procedure since the trademark is examined in each country as a national trademark, so that the owner is, for example free to abandon his trademark in a country, file an objection in another, or obtain registration in a third…

    – :

    • A different protection in the selected countries (the same trademark may be fully accepted in Spain and partially refused in Germany for certain goods or services)
    • The need to have a protection in France or in the European Union (registered trademark or not).

    The two systems coexist and intermingle: choose one or the other, or both, depends on each case and requires a perfect analysis of your objectives.

    It is highly recommended to put under surveillance your trademarks in order to be informed of any filing made by third parties that may affect your rights.

    This systematic and computerized monitoring allows to detect the identical and similar trademarks you can oppose either administratively through the procedure established by the INPI or through a pre-litigation procedure or judicially.

    Why monitor its trademarks?

    Because you have to react quickly (sometimes within two or three months from the date of publication) and an opponent will renounce often faster and thus cheaply when informed as early as possible of the dispute. We are at your disposal to implement this monitoring, particularly in France, Europe and around the world if you like.

    In addition, it is now possible to set up other such monitoring:

    Company name monitoring

    This surveillance is to monitor identical corporate names, trade names and signs including the monitored name.

    Domain name monitoring

    This monitoring allows to be notified if a new domain name including the name monitored is registered, if an inactive domain name becomes active, if a landing page vanishes, or if the content of a site change significantly. It also provides access to the history of each domain to monitor. Such monitoring may relate to generic extensions (.COM, .NET, .ORG, etc.), countries extensions (.FR, .DE, .US, .JP, etc.) and new Internet extensions (.BERLIN, .PARIS, .CLUB, etc.)

    Monitoring detects identical names, almost identical or containing the monitored trademark.

    Monitoring of social networks

    It is now possible to monitor the presence of a trademark on Facebook and Twitter. This monitoring can detect several types of outcomes such as Facebook pages, accounts, groups, events, notes, etc. On Twitter, the accounts are only revealed. Moreover, the results do not apply to posts and comments generated on these social networks. This monitoring allows to detect the reference to the trademark in the URL, title or content of the Account page.

    1. The protection of your name on the Internet

    The domain name is the name of your site: it is usually the name of your company or one of your trademark. It is a distinctive sign that meets certain legal criteria and can only be booked if available. A domain name is valid for one, two, five or ten years depending of the extensions, renewable indefinitely.

    @MARK simplifies your domain names with an “all inclusive” offer including booking and domain name management in about 190 territorial areas:

    • The international extensions (.com, .net, .biz, .org, .info)
    • The French extensiion (.fr)
    • The local extensions (.be for Belgium, .it for Italy, .de for Germany, .ch for Switzerland, .us for the USA…)

    2. What territory is protected by a domain name?

    The vocation of a domain name is global, which has led to erroneously consider that disputes concerning those names did not meet any rules. In fact, if anyone in the world can connect to a site whatever its address (.fr or .com …), the legal rules that apply are those of the territory in which the name is used.

    3. The offensive function of the domain name

    The domain name has an active function since it is a right that allows action against a domain name identical deposited in another area or against a similar name if it creates a confusion for users. Of course, the possibilities for action are clearly reinforced when the holder is also the owner of the related trademark.

    4. The defensive function of domain name

    The domain name also has a passive function as for the Internet, the rule “first come, first served” applies generally and this means that if the name is not reserved in a specific area, it can be taken by a third party. Experience shows that the cost of a domain name reservation is infinitely lower than a recovery of the same name filed by a third party in bad faith. If the third party is of good faith is very different since the name can not be recovered (see: the decision MAGGI.COM in which NESTLE was dismissed because the name MAGGI had been booked in good faith by an Italian national named MAGGI).

    5. The patrimonial function of domain name

    The domain name has finally, like other intangible rights a financial function to the extent that it necessarily has a significant patrimonial value – just count the millions of pages read on the Internet for some sites.

    6. The administration of domain names

    Reservation fees and amounts due to management agencies are fully included in your subscription. You have nothing else to pay to anyone. You do not have to make payments online with your credit card … Monitoring of annuity payments is automatic so you are alerted in time when your subscription expires and you could lose your domain names.

    7. The settlement of disputes between a trademark or a company name to a domain name

    Our role is to advise you in order to implement the best possible strategy to recover a domain name fraudulently filed by a third party or to act against a case of cybersquatting, typosquatting, pointsquatting, etc…:

    • Cease and desist letter
    • ICANN arbitration procédure
    • Judiciary procedure

    8. What other benefits generally offered?

    • The delegation of change (DNS) when booking your names, they are automatically delegated to the servers of our provider. We ensure the delegation of change to DNS servers chosen by the customer.
    • Changes contacts: it is possible to modify the coordinates of the persons responsible for the management of names (administrative contact), persons who are responsible at the technical level (technical contact) and also liable to pay (payer contact).
    • The names pointing to a holding page: pending the opening of your site or just to exercise a “discreet” protection to a name, the package includes the name pointing to a holding page specially designed for this effect.
    • Other benefits: the link between your domain names to existing sites is supported for free (example: you book “masociete.info” but it is redirected back to “masociete.fr”…).
    • The DNS servers of our provider are available: the state of the art, highly secure, of course, these servers are used to manage web and email functions related names. You can also create sub-domains (for a domain name “masociete.fr”, an example of a subdomain is “monproduit.masociete.fr”).
    • The reconstitution of portfolios when the client does not know the domain names that have been filed (through subsidiaries, by various officials, by different providers…)
    • Our technical service providers can finally offer you the hosting of your website.
    • For easier management of your domain names, we suggest you to host them with a single provider: as such, the repatriation of domain names registered through other providers on the servers of our provider is simple and the cost is identical to that of an annuity.

    9. Is it possible to monitor a domain name?

    Internet monitoring are essentially of three types:

    1 / Monitoring near or identical to the names of the client in a number of areas,

    2 / Monitoring of the name in newsgroups or “chats” to find out how people talk about a trademark;

    3 / Monitoring a name originally booked by a third party and capture it the minute it is available again.

    10. What is the cost of a domain name?

    The cost of a domain name are reasonable because on average, the overall budget is about 6 € per month for a name in .com or .fr (including booking fees, registration, technical management).

    11. What are the essential complements of the domain name ?

    It is sensible and highly advisable to conduct a trademark filing in the classes of goods and services for your business.

    Conclusion : 

    Reserve a domain name, this may sound simple but it is important firstly to manage its domain names globally and effectively (as a portfolio of brands or patents) and secondly to be certain to own everyone of them. @MARK is able to assist you both legally and technically.

    1. What is a community design?

    This is a design valid, like the Community trademark in all 28 countries of the European Union. This design has, like the Community trademark a unitary character and can in no way be divided – its holder has an exclusive right (monopoly) on the whole territory of the European Union.

    The design is valid for 5 years, renewable four times for a period of 5 years, a total of 25 years hence.

    2. What are the countries covered by the Community design?

    To date, 28 countries are: Germany, Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Spain, Estonia, Finland, France, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Poland, Portugal, the Czech Republic, Romania, the United Kingdom, Slovakia, Slovenia and Sweden.

    3. What are the advantages of the Community design?

    The benefits will be the same as those now well known to the Community trademark:

    • The protection of the design patent is the same in each country of the European Union since the model is recorded by an European Office ;
    • Protection is general and not limited to classes of products and services like the Trademark protection ;
    • Its particularly attractive cost ;
    • There is only one file to be managed, only one application in one language…
    • The procedure should be fast because there is no novelty examination;
    • The possibility to protect up to seven different views of the same model at no additional cost;
    • There is no need to exploit the Community design contrary to the trademark;
    • It is possible to claim priority of an existing national design within 6 months;
    • The litigation is conducted before a court specialized in the Paris Court.
    • In case of dispute, it is the defendant to prove the lack of novelty as opposed to copyright where the plaintiff must prove the originality.

    4. What are the disadvantages of the Community design ?

    • The Community design can only exist and only be valid in all countries of the European Union (this is also its purpose!)
    • the validity of a design is conditioned by the absolute novelty in time and space: a citation from scratch, ie an identical or virtually identical design will question the overall design (this fact is not bound to the Community deposit)
    • Some countries bordering France are not part of the EU, for example Switzerland, and protection in such countries requires to perform either a separate national deposit or filing an international model to indicate this country…

    5. Why file a Community design ?

    To have a single valid tender throughout the European Union and make only one renewal, to reduce its rights management costs in Europe … Recall the need to protect themselves quickly because the disclosure of the design, including by its own owner, can challenge the validity if it takes more than one year before filing.

    6. How to file a Community design ?

    Some remarks of a practical nature:

    • An application may include a single design (single application) or any number of drawing and models (multiple application) ;
    • Each model can not be contain more than 7 views, ie of graphic or photographic reproductions (in color or black and white) of all or part of the model – under limited conditions, specimens (fabric, wallpaper, lace, leather …) model can replace the graphic reproductions ;
    • The postponement of the publication can be requested, which means that the model is not published for a period of 30 months: the publication fee is not payable in this case but a deferral fee is due;
    • The creator of the model can be named independently of the name of the applicant.

    7. What is the cost of a Community design?

    The cost of a Community design is particularly advantageous because of the lack of novelty examination procedure and intrinsic validity of the new deposit. For information, the overall budget of a Community design is about (HT € 0.77 per month per country !!! filing fees, publication, registration, management MARK)

    Conclusion : The Community design should meet a great success because of its low cost, the possibility to occur, as for trademark rights valid throughout the European Union and the opening of a market unique and expanding due to the future enlargement of the European Union

    @MARK signed in 2006 a partnership agreement with a highly specialized engineering firm patent (Patent Attorney created in 1989, Representative before the European Patent Office, including 5 engineers who can process the following specialties: food, mechanical, electricity, pharmacy, biology, cosmetology, physics, energy, new technologies) to enable its customers to benefit of the best advice on inventions and patents, to file these patents, and follow procedures in France and the world.

    Do not hesitate to contact us for any question about it!

    @MARK also has a specialized litigation department in the matter and can effectively assist you in defending your rights before the competent courts with the assistance of a team of engineers.

    REACT

    Litigation, as plaintiff or defendant, has to be build: the evidence and then the strategy are of crucial aspect.

    It is thus essential to establish before the beginning of trial, the goal: clean the market, listen to an unscrupulous competitor, obtain a principle of sentencing, “wake up” the negotiations that are bogged down, etc, …

    Our team is there to determine, depending on the specifics of each case, the best strategy, whether designs, copyrights, trademarks, domain names, patents, unfair competition or contractual or commercial disputes.

    Always careful to find the most suitable solution to the problem of customers, the transaction is never neglected (see “NEGOTIATION”).

    Our mission of Counsel is always concrete and pragmatic.

    When the situation requires the establishment of exceptional measures, our teams determine the most suitable procedure from the following procedural arsenal:

    • The finding measures: To report not accessible evidence, the magistrate can authorize a party, upon request, to make any finding by a bailiff and to communicate the elements held by the opposing.
    • Urgent measures: Upon request in very specific cases, but immediately applicable urgent measures such as the closure of a website, the cessation of acts of marketing, seizure of property of the opponent, or the allocation of provisional damages, may be ordered by the competent judge; This highly exceptional procedure is particularly effective.
    • The infringement seizure: Authorized by the judge ex parte, that measure is conducted by a bailiff, assisted where necessary by the police; This measure is particularly effective for measuring the infringing sales, including entering invoices and origin of counterfeiting.
    • Interim proceeding: Any measures to prevent imminent harm or to prevent the continuation of the acts may be ordered pursuant to a quick adversarial proceedings; this emergency procedure allows two months for a decision. On special permission from the competent magistrate, the period is then referred the classic cut short; the decision can be made in 2 to 3 weeks.
    • Le jour fixe: When conditions are gathered for urgent measures, but there is still an urgency to get a decision on the merits, the judge on application, can reduce conventional procedural deadlines of 18 months to 3 months.

    IP rights owner (trademarks, designs, patents, copyrights, etc …), Customs offer you the opportunity to strengthen the protection of your rights by filing a Customs application.
    This is a preventive approach to bring to the attention of Customs rights monitoring and must contain the elements to know such rights (trademark, model, copyright, etc …) and identify the genuine from the fake. (individual marking, graphic design, catalog, etc …).
    The idea is to simplify to the maximum the task of customs that can operate in ports, airports but also on highways, markets or in warehouses … They must be able to identify in a minimum of time a fake good.

    How does it work?

    During their controls, customs officials have an online database containing all the applications and in case of doubt on the authenticity of a product, they have the possibility to suspend the marketing of the said goods as a maximum of 10 days (three days for perishable goods) to allow within this period the right holder to be informed and obtain their opinion on the authenticity or not of said goods.

    After this period, the rights holder (or his representative) may request the destruction of the goods or take legal action against the infringer. Failing to answer, the goods will be released.

    Experience has shown us that Customs are very useful for rights holders who wish to “clean” the market. Customs officers are indeed interested in customs fines for counterfeiters, which explains in part the action of Customs is free for holders of intellectual property rights (as well as the filing of an application for action).

    So what are you waiting for filing a customs application and benefit this essential tool for the protection of your rights?

    We are of course at your disposal for further information, you study with the implementation of customs supervision and assist you in drafting these applications including collecting documents related to your French and Community trade marks, designs or your any other intellectual property right.