Skills

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 (choiceof products and services, selection of corresponding classes, territorial scope …) most suited to theircurrent 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 risksat 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 itsclients and to react quickly.

Resolves, amicably before the Administration, or through a litigation before French Courts, anyconflicts that may occur. In this respect, @MARK conducts an analysis of risks, files opposition procedures and pursues legalaction to enforce its clients’ rights.

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

Our job

Advise

Prior rights searches
Audit and valuation
Management
Contract
Negotiations
Litigation

Protection

Protection
Filing strategy France and abroad
Surveillance/Watch
Internet domain names
Designs and models
Patents

Reaction

Legal actions for counterfeiting
Detention and customs interventions
Examples of interventions

Prior rights searches

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.).

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 signbecause the stakes are high and the real risks including financial in case of administrative and / or judicialproceedings. It is a matter for specialists due to the technicality of the matter and to control multiple parameters to analyze the obstacles identified.

Audit and Valuation

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.

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.

Management

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.  

Contracts

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.

Negotiations

Our negotiation expertise

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.

Litigations

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

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.

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 …

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 !!!

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 isundoubtedly an opening on a single market and growing due to the steady expansion of the EuropeanUnion…

Filing strategy in France and abroad

The match Community trademark / International trademark

Regularly, when one wishes to extend the protection of its trademark abroad, under French priority of a trademark filingor 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.

Watch

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

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

Internet domain names

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…)

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).

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.

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 isable to assist you both legally and technically.

Designs

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.

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…

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.

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 expandingdue to the future enlargement of the European Union…

The patents

@MARK signed in 2006 a partnership agreement with a highly specializedengineering firm patent (Patent Attorney created in 1989, Representative beforethe European Patent Office, including 5 engineers who can process the followingspecialties: 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 caneffectively assist you in defending your rights before the competent courts withthe assistance of a team of engineers.

Legal actions infringement

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, unfaircompetition 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.

Customs withholding and seizure

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.

Examples of interventions

FLEUR DE CORAIL / FLEURS DE ROCAILLE

Parfums Caron filed an opposition to the registration of the trademark FLEUR DE CORAIL of the company Pacific Création on the basis of their earlier trademark FLEURS DE ROCAILLE. The Director of the INPI rejected this request, considering that there was no risk of confusion between the two expressions. The parties met again before the Court of Paris. In its ruling of 23 September, the Court confirmed and decided that the consumer would not be entitled to attribute a common origin to them because of the visual, phonetic and intellectual differences. It specifies that "each of the expressions in question, taken as a whole, is invested with its own evocative power, which radically distinguishes it from the other".judgment of the Court of Appeal of Paris obtained by @MARK.

Skills

Our job

Advise

Protection

Reaction

Prior rights searches

Why do a prior rights search?

What are the blinding anteriority?

A search on the Internet can be enough?

The review of the INPI’s lists is enough?

What are the limitations of prior rights searches?

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

How to overcome an obstacle identified during a research?

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

How to assess the likelihood of confusion between two marks?

What is the cost of a complete search?

Audit and Valuation

Audit

Valuation

Management

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

Recovery in managing a portfolio of trademarks Is it complicated? Is it long? Is it expensive?

How is this happening in practice?

Contracts

Why to license trademarks, designs, patents?

Negotiations

Our negotiation expertise

Litigations

The management of litigation in Intellectual Property:

What to do?

Protection

What is a Community trade mark?

What are the countries covered by the Community trade mark?

What are the advantages of the Community trade mark?

What are the disadvantages of the CTM?

Why file a CTM?

What is the cost of a CTM?

Internet and the European Union

Filing strategy in France and abroad

The Community trademark :

The International trademark :

Watch

Why monitor its trademarks?

Internet domain names

The protection of your name on the Internet

What territory is protected by a domain name?

The offensive function of the domain name

The defensive function of domain name

The patrimonial function of domain name

The administration of domain names

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

What other benefits generally offered?

Is it possible to monitor a domain name?

What is the cost of a domain name?

What are the essential complements of the domain name ?

Designs

What is a community design?

What are the countries covered by the Community design?

What are the advantages of the Community design?

What are the disadvantages of the Community design ?

Why file a Community design ?

How to file a Community design ?

What is the cost of a Community design?

The patents

Legal actions infringement

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

Customs withholding and seizure

How does it work?

Examples of interventions

FLEUR DE CORAIL / FLEURS DE ROCAILLE

Why monitor its trademarks? 

How to file a Community design ? 