Acquisition of rights
Because each project is unique, our support always starts with a prior study to advise you on the most appropriate strategy for your actual requirements, development objectives, the definition and implementation of your trademark policy and your budgetary constraints.
We support you on a day-to-day basis in filing and renewing your French, European, international and/or foreign national trademarks. Backed by experience acquired on the ground, and advanced knowledge of the competitive environment of the sectors in which our clients operate, our expertise can help you in protecting, positioning and promoting your trademark, whatever the context (development of a new product or service, a merger-acquisition, a worldwide or regional strategy, etc.).
Thanks to our proven network of correspondents, we will be able to handle all your trademark prosecution and renewal needs around the world.
Our teams are highly experienced in the administrative procedures of different IP offices, and monitor the registration procedures attentively. The management of deadlines is scrupulously supervised, thanks to our expertise and knowledge with the support of a professional tool exclusive to Beau de Loménie. We also provide our clients, free of charge, with BDL-IP Access ™ an online tool for managing, consulting and monitoring their portfolios of IP titles. BDL-IP Access ™ is an invaluable tool for communication and reporting, both internally and between yourselves and ourselves, and enables the status of your trademark portfolio to be consulted at any given moment.
Our support is provided not only upstream of your projects – by defining the most appropriate and effective strategy for your trademark filings, continuing with the actual filing of your trademark applications, the monitoring of your procedures up until the final acquisition of your rights (namely the official filings and grant of the corresponding titles) – but also downstream to protect and securing your commercialisation activity.
Development, securing and exploitation of rights
Before planning to register a trademark, and in order to avoid problems caused by the filing itself, a search for prior trademark rights should be carried out to check that your project is not endangered or blocked by the rights of third parties. It is therefore important to seek the advice of trademark attorneys to ensure the availability of the rights that you wish to acquire and to secure them.
Beau de Loménie has a centralised technical documentation service, with particular expertise in trademark searching. This service, is equipped with various private databases, enabling it to make searches for prior trademark rights (identical searches, similar searches, etc.), in various registers (national, European and international) prior to any trademark filing, pre-litigation or litigation. Based on the research carried out, we prepare a summary report of the results found, accompanied by our documented legal advice and concrete and appropriate proposals for possible strategies, particularly to limit or eliminate any risks attached to your project. We also set up watches to detect trademark filings made by your competitors, and monitor the trademarks registered by third parties.
We also represent you in your revocation actions, whether as opponent or proprietor, in the event of actions enforced against a third party trademark, or brought by a third party against one or more of your trademarks. We also implement and coordinate actions carried out in collaboration with our lawyers or our foreign colleagues.
Trademarks are a form of intangible asset. They are exploited and secured in numerous ways, depending on the industrial and competitive sector concerned. Backed by multi-sectorial experience and by our expertise and advanced knowledge of the legal environment surrounding the communication strategies of trademarks, we assist our clients during negotiations and in drafting assignment and trademark-licensing contracts, as well as distribution, consortium or co-existence agreements. This is made possible by the expertise of our internal team of former lawyers, specialised in IP law and Contract law.
The image of your trademark is associated with how your clients perceive your name, logo, company and your products and services. The intense media coverage caused by the increase in digital communication tools (Facebook, LinkedIn, Instagram, etc.) also results in the digitalisation of the image of your trademark.
The related risks to rights-holders are greatly increased. This situation means that companies have to manage their presence online (notably via community management), and the impact of the Internet on their image and the control of their e-reputation, on a day-to-day basis. We support you with our expertise, cooperate daily with you to advise you how best to protect your trademarks in the digital world and guide your communication strategy with the aim of efficiency and optimised protection.
When implementing the strategy for deploying your trademarks, it may also be necessary to protect them by objecting to the registration of a competing trademark that is identical or similar to one of your trademarks, which would risk causing confusion in the market or weakening your rights.
You may also have to defend yourself against third parties, who consider that one of your trademarks infringes their rights. We advise you in our capacity as trademark attorneys and represent you in all your procedures, making a concrete analysis of the situation and an expert appraisal of the related risks. We always act in the interest of your trademark and its image and, to the extent possible, we prefer dialogue to conflict, through the negotiation of agreements to ensure the longevity of your trademark protection strategy. Each year, Beau de Loménie manages more than 400 trademark opposition cases.
We can also support you in your litigation, notably concerning trademark infringement, in France and globally. We have a proven network of correspondents throughout the world. We therefore support you under all circumstances, throughout the life of your case, and we advise you in both pre-litigation and litigation phases, to direct your strategy as an opponent or proprietor, whether it concerns an isolated case or a more global problem.
A distinctive trademark identifying your company’s products and services helps to build and consolidate your reputation. Any damage to this reputation, infringement of your rights or counterfeiting of your trademark is studied in-depth: counterfeit products are usually manufactured to a lower standard of quality so that communication concerning them is misleading or disparaging, which harms your image. By preventing the manufacture and distribution of these products, you avoid any dilution of your rights, maintain your high-quality image and control your reputation and brand-awareness. Acting against such practices and fighting counterfeiting is essential for your company, the trouble-free growth of your activities, maintaining the value of your trademarks and the protection of consumers. Each year, Beau de Loménie manages a very large number of applications for customs seizures that give rise to several hundred cases of customs seizures per year and the destruction of hundreds of thousands of counterfeit products.
Audit and valuation
As part of the management of their IP rights, or as a result of a specific issue, each holder of IP rights is at some time confronted with the requirement to analyse their portfolio of trademarks, designs and/or domain names and check the adequacy of their protection with regard to the commercial activity undertaken in the company, with the aim of rationalising costs or, for example, in the context of an assignment or acquisition of rights, or when setting up a network of licensees.
We also support you in these procedures for auditing and valuing your portfolio or elements of your portfolio.
We have proven and recognised expertise in the development of filing strategy and protecting trademarks and more widely in matters of IP, so that we are able to carry out all checks and procedures for examination, portfolio analysis and due diligence of target companies, particularly during acquisition or disposal operations. Our processes include examining the activities concerned, analysing your requirements to define the checks that must be carried out (verification of trademark filings, analysis of the validity and/or fragility of these rights, etc.), valuing the IP rights concerned and assessing their appropriateness.
We also make recommendations to help you rationalise and/or complement the protection of your rights.
We also rely on our partners who are specialised in taxation and accountancy to value your IP rights in detail and with great accuracy.
Whether it is for the requirements of an internal valuation or with the aim of a sale or a purchase, an intra-group transfer or to establish royalties for licence contracts on a title or a portfolio of IP rights, we place our expertise at your service to provide you with the arguments and elements that substantiate the value of your trademarks or IP rights. We therefore support you in the collection of operational elements and data necessary to the valuation of your IP titles.
Our expertise will enable you to successfully complete your projects securely and ensure that they are adapted to your requirements, and will provide you with a sound and justified study of your trademarks, or your IP titles, upon which you can rely, for example during a tax inspection or for estimating losses in the context of an action for infringement
For more information
Your IP strategy is not limited to the management, introduction and protection of your trademark portfolio, but also extends to the other distinctive signs represented by your trade name, company name and domain names, the commercial value of which needs no demonstration.
Naturally, these signs come within our field of expertise. We therefore support you in choosing, managing and defending these signs.
SECTION RIGHTS COVERING DIGITAL MATTERS, THE INTERNET AND DOMAIN NAMES