Trademarks
Arénaire Avocats law firm assists you in all stages of the life of your trademarks, from filing to defending your rights, including their protection and enhancement. Trademark validity criteria, strategic counsel, infringement actions, trademark transfer and licensing agreements: Arénaire is your partner and lawyer in trademark law.
Strategic counsel in trademark law
We advise you and implement a global strategy for the filing, management, protection and defence of your trademarks and distinctive signs. Our approach is pragmatic and adapted to the realities of the market and to your objectives.
Validity of trademarks
First, we provide you with our expertise to determine whether the chosen sign is valid and complies with the provisions of the French Intellectual Property Code on the lawfulness and distinctiveness of trademarks.
It is then essential to check its availability with regard to prior rights, in particular the:
- Prior trademarks
- Company names
- Trade names and signs
- Copyrights and designs
- Names of local authorities
Arénaire Avocats’ attorneys will conduct thorough prior art searches for you, assess the risks and advise you on the availability of the chosen trademark.
Global strategy
Together, we determine the most solid and reliable distinctive signs with regard to the law and the rights of third parties. We analyse the goods and services to be designated and the territories to be covered, based on the current and future use of your trademarks. We advise you on how to streamline and optimise the management of your trademark portfolio.
Our objectives:
- to provide you with practical and enlightened advice,
- to enable you to exploit your trademarks with peace of mind,
- to set up an optimal protection of your rights,
- to defend your distinctive signs effectively.
Arénaire Avocats: expert lawyers in trademark litigation
Since its creation, Arénaire Avocats law firm has developed a solid expertise in trademark litigation, whether in civil, criminal, customs, or administrative proceedings. We analyse the situation objectively and determine the chances of success and the pre-litigation and litigation strategy to be implemented. Our job is to defend your interests, whether by negotiating amicable settlements or by conducting legal proceedings before the competent courts. We also assist you in mediation and arbitration procedures.
Civil litigation
We represent you before the civil courts in all trademark infringement, unfair competition and parasitism litigation:
- Infringement by identical reproduction
- Infringement by imitation of a trademark
But also in actions for infringement of a reputed or well-known trademark.
Criminal and customs litigation
Trademark infringement is an offence punishable under the French Intellectual Property Code.
We have developed real experience in criminal litigation, as well as in customs procedures. Thibault Lentini and Pierre Massot are the co-authors of the JurisClasseur booklet No. 7531, entitled “Customs and counterfeiting – Customs powers in the fight against counterfeiting and proceedings initiated as a result of customs intervention”, published in September 2019.
In the context of this activity, Arénaire Avocats will assist you in the following missions
- Setting up customs surveillance: customs declarations for the detention and seizure of counterfeit products, in France and throughout the European Union.
- Assistance in criminal or customs investigations, as well as in the context of judicial information initiated by an investigating judge.
- Assistance and representation before the criminal courts in matters of trademark infringement.
Administrative proceedings before intellectual property offices
- Oppositions against the registration of subsequent trademarks that infringe your rights.
- Challenges to oppositions filed against your trademark applications.
- Trademark invalidity actions.
- Actions for revocation of trademark rights for lack of use or degeneration.
We act in administrative proceedings at first instance, as well as in appeals before the courts of appeal.
Mediation and Arbitration
Alternative dispute resolution methods are becoming increasingly common. For a quicker and more satisfactory outcome for all parties, it is sometimes advisable to opt for mediation or arbitration. Arénaire Avocats advises, assists, and represents you in these procedures and defends your rights and interests. Several of the firm’s lawyers have received specific training in mediation, interest-based negotiation, and collaborative law.
Contact our team
Arénaire law firm is at the service of companies and designers based in Paris, in the Ile de France region, but also throughout France and abroad.
Arénaire Avocats: your partner for your trademark exploitation agreements
Because your business evolves and develops, you are led to conclude partnerships and agreements that have an impact on your trademarks.
Arénaire Avocats advises you and intervenes in the negotiation and drafting of all contracts relating to trademarks:
- Trademark licenses
- Trademark transfers
- Trademark coexistence agreements
- Franchise agreements
- Trademark pledges
- Etc.
Other distinctive signs
Other distinctive signs than trademarks are equally essential to the activity of companies. As part of our global and strategic approach, we also advise you on the protection, management, and defence of all your distinctive signs, such as:
- Trade name
- Emblem and logos
- Company names
- Domain names
- Etc.
Management of trademark portfolios
Trademark registration
We handle all filing and registration formalities with the Institut de la Propriété Industrielle (INPI) for French trademarks, the European Union Intellectual Property Office (EUIPO) for European trademarks, and the World Intellectual Property Organization (WIPO) for international trademarks.
Trademark renewals and records
Once registered, a trademark must be renewed every five years. It may also be subject to various records, for example in the case of licensing. With our trademark portfolio management service, you don’t have to worry about all these deadlines and formalities, we take care of them for you!
Trademark monitoring
Filing and registering trademarks is all well and good, but it is necessary to protect them throughout their validity. Intellectual property offices do not check whether new trademark applications are identical or similar to earlier trademarks and whether they infringe them. A third party could therefore very well register a trademark identical to yours!
It is therefore necessary to set up a regular watch. We monitor new applications on your behalf and, if necessary, we take the necessary steps to protect your trademarks (letters of formal notice, oppositions, and legal action).
Trademark law: our expertise at the service of our clients
Whatever your sector of activity, the reputation of your brand or your problem, we provide answers to your questions and defend your interests efficiently. Our clients trust our expertise and entrust us with a wide range of trademark law cases:
- Counsel and legal representation of a world leader in alcohol in trademark disputes.
- Counsel and representation of a French toy importer in a customs dispute relating to a world-famous three-dimensional trademark for a game.
- Counsel and representation of a young company marketing a relaxing and energizing drink in a dispute with a major champagne house.
- Counsel and representation of a pharmaceutical company, leader on the world market of generics, in a dispute with a world-famous American luxury jewellery company.
- Counselling and representing a company with a worldwide reputation in the film industry in the defence of its well-known trademark in a dispute with a company specialising in cosmetics.
- Counsel to a start-up in its trademark registration strategy.
- Counsel to one of the main French players in the furniture and interior decoration industry in its global strategy for the registration and protection of its trademarks throughout the world.
- Advising and representing a leader in the collaborative economy in a trademark infringement and cybersquatting case.
Do you need advice on trademark law? Are you looking for a lawyer for a dispute concerning trademarks and other distinctive signs? Do you want to exploit your trademarks via transfer or licence agreements? Then contact us! Together we will study your needs and the best solutions to your problems.