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Trademarks – International extension

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International extension

Is your trademark well protected abroad?

In order to develop your presence abroad (exporting, licenses, internet sites, etc.), you are most often led to extend the protection of your trademark geographically. You should get informed on the semantic and linguistic choices concerning the trademark (example: taking ideograms into account for a registration in China).

Once the initial filing has been carried out in France, you benefit from a six-month priority period to protect your trademark abroad, starting from the date of the initial filing. Several channels for extension can be considered:

Three procedures for extending protection

The Community trademark: It allows you to obtain a single title, valid in all of the countries of the European Union. It grants its holder an exclusive right which makes it possible to prohibit any third party from using the trademark in the same commercial and industrial activities. This single title simplifies the formalities for registering and managing the procedure. An opposition procedure is also provided in the framework of regulations on the Community trademark. Infringement proceedings could be brought before the competent national courts. The rulings of these courts apply across the entire European Union in such a way that it is not necessary to pursue infringers in each Member State. Finally, the Community trademark can form prior art that is opposable to the registration of any subsequent trademark, in all of the Member States.

The international trademark: the system governing the international trademark is relatively complex. It is governed by two treaties: the Madrid Agreement and the Madrid Protocol. An international trademark makes it possible, through a single registration, to obtain protection in about 80 countries. Once this registration has been carried out, an examination procedure follows in each of the countries that you will have designated. It is then that the difficulties can arise, due to the specifics that are proper to each country: the criteria for assessing the validity of the trademark can differ in particular from one country to another. For example, certain States consider that digits, acronyms, geographical or patronymic names, colors or audible signs cannot constitute valid trademarks.

The foreign trademark: Direct registration with the Trademark Offices of the countries in which protection is sought. Each procedure is subject to the national law in effect in the country in question. This method of protection covers you solely in the territory of this State.

YOUR STAKES

➢ You want to make enlightened decisions, that meet your objectives for development abroad.

➢ You want to optimize and anticipate the costs of the procedures.

OUR APPROACH

➢ With you, we analyze the markets and the geographical territories where your trademark is likely to be used.

➢ We precisely define the costs of protection in the target countries and the most appropriate channel for extension.

➢ We evaluate the chances of obtaining registration for the trademark in the target territories.

Want to extend the protection of your trademark abroad? Contact us!

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