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Your trade mark, your databases and your software are often worth more than your premises. Provided you actually own them.
A business discovers the value of its intangible assets at two moments: when a competitor comes close to them, and when a buyer audits them. In both cases the question asked is the same — do these rights really belong to you, and can you prove it?
We act for businesses in the region on the protection, the exploitation and the defence of their trade marks, know-how, software and databases, and on their compliance with the General Data Protection Regulation.
Prior-rights searches, choice of classes, French, European or international filings, responses to oppositions, watching and renewal: a badly filed trade mark protects badly, and too narrow a filing leaves the door open to a competitor.
Territorial scope, exclusivity, duration, royalties, quality control, what becomes of the licence on a sale: licensing is the most profitable way of exploiting a trade mark, provided it does not dilute its value.
Defensive registrations, recovering a name registered in bad faith by a third party, out-of-court proceedings before the competent body: a domain name is handled as an asset, not as a technical formality.
Formal evidence, a saisie-contrefaçon search and seizure, a letter before action, proceedings on the merits: we assess first how solid the right relied on is and whether the action makes economic sense, then choose between settlement and court.
Development, integration, maintenance, hosting, software as a service: ownership of the code, the ability to get your data back and the service levels are the three clauses that determine how dependent you are on the provider.
A provider who writes code, designs a logo or produces content keeps the economic rights in it for as long as no written and specific assignment has been made. A paid invoice is not an assignment.
Confidentiality agreements, non-disclosure clauses, trade secrets, internal management of access: since know-how is not a proprietary right, its protection rests entirely on the steps the business has taken to keep it secret.
The record of processing activities, privacy notices, lawful bases, retention periods, processors, transfers outside the European Union, handling access requests: we build the compliance and document what, if there is an inspection, will make the difference.
The right moment
An assignment of rights signed with the provider at the start of the project costs a few lines of contract. The same assignment, asked for during due diligence, is negotiated with someone who knows you can no longer back out.
The subject is the same. It is when it is dealt with that makes the cost.
How we work
You set out the situation, we say frankly whether we are the right people and what the work would involve. No commitment at this stage.
It describes what is done, what is not, the basis on which fees are calculated and the timetable. Nothing starts without your written agreement.
One lawyer holds your file; each question is dealt with by whichever of us handles it every day. You have only one person to call.
Formalities, filings, deadlines: the firm takes over and keeps you informed until the file is closed.
Frequently asked questions
No. The corporate name, the trading name, the shop sign, the domain name and the trade mark are five distinct rights, acquired in different ways and protecting different things. Only a trade mark filing confers a monopoly over the goods and services covered.
The filing itself takes a few days, registration around five months where there is no opposition. Protection runs back to the filing date, which makes the priority of that date decisive. A prior search avoids a refusal or an opposition that would cost a great deal more.
Gather the evidence of use and of priority, have it formally recorded, then send a letter before action. Most cases are settled at that stage. If the use continues, a saisie-contrefaçon allows material to be collected even before proceedings are issued.
Unless there is a written assignment, they keep their economic rights and may reuse their code. The assignment must set out the rights transferred, their scope, their purpose, their duration and the territory covered: a generic “transfer of ownership” clause is often held to be insufficient.
The two filings protect different things: the word mark covers the name however it is presented, the figurative mark covers the visual. For a business whose identity rests on a strong graphic sign, filing both is justified; for the others, the word mark is usually enough.
It applies as soon as personal data is processed, which includes a customer database, a website with a form or running a payroll. The obligations are proportionate to the activity: for an SME, the record of processing activities, the privacy notices and proper contracts with processors are the essentials.
Its main use is to prove that the information was confidential and that the recipient knew it — an essential condition for then acting on the basis of trade secrets. Without one, disclosure is hard to sanction, even where it is obvious.
Practice areas involved
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