Brandstorming - Intellectual Property Law Firm

Areas of expertise

AREAS OF EXPERTISE

BRANDSTORMING is a French Intellectual Property Law Firm, member of the Compagnie Nationale des Conseils en Propriété industrielle (C.N.C.P.I.).

BRANDSTORMING provides support and advice to its clients taking into account both their economic and commercial strategies for the most efficient management of their intellectual property assets.

Through this approach, BRANDSTORMING develops client-specific strategic plans whilst accommodating future growth options. BRANDSTORMING aims at protecting and defending its clients’ rights and optimizing the value of their trademarks, designs patents and copyrights portfolios.

BRANDSTORMING is particularly experienced with the protection and defense of Intellectual Property Rights in the international scope, in particular in copyrights matters and trademark and design patents prosecution and enforcement.

The main missions provided by BRANDSTORMING are the following:

1)- ENSURING THE LEGAL SECURITY OF PROJECTS AT THE NATIONAL AND INTERNATIONAL LEVEL

1.1Advising and assisting on the registrability and availability of contemplated trademarks and designs: :

Providing an opinion on the inherent registrability of the proposed mark or design / Availability searches: analysis of the searches and reports, assessment of the relevant prior trademarks and designs which constitute potential bars / Recommendations regarding the strategy to be implemented in order to neutralize the legal bars revealed by the searches

1.2Negotiating coexistence agreements, assignments of trademarks or designs, and lodging cancellation actions for non-use to neutralize the prior rights located:

. Carrying out negotiations

. Drawing up trademarks and design assignment agreements, license agreements and coexistence agreements

. Conducting investigations to determine if the prior trademarks are used

. Lodging cancellation actions for non-use if the case arises

1.3Defining the appropriate strategy for trademark or design protection

2)- ACQUIRING INTELLECTUAL PROPERTY RIGHTS

2.1Filing applications for the registration of trademarks and designs in France, before the EUIPO, the WIPO and in any country worldwide

2.2Protection of intellectual creations through copyrights

2.3Protection of Internet domain names and definition of the appropriate strategy of registration of domain names

. Identification of the recommended applications in the country code extensions on the basis of the main commercial markets

. Registration of Internet domain names

. Creation of Sub-domains

. Creation of MX records in the DNS zone.

3)- MANAGEMENT OF EXISTING RIGHTS

3.1Supervision of trademarks and designs registration procedures: putting forward arguments in order to overcome any objections and citations made by the Patents and Trademarks Offices as well as oppositions lodged by third parties worldwide.

3.2Recordals of changes of corporate name, head office address and legal form as well as transfers of ownership and licenses

3.3Renewals of trademarks and designs in France, before the EUIPO, the WIPO and abroad

3.4Renewals of domain names

3.5Updating the contacts regarding the complete portfolio

3.6Specific forwarding / pointing of domain names

3.7Global forwarding / pointing of a complete portfolio of domain names

3.8Support to people internally regarding internet slamming

4)- WORLDWIDE DEFENSE OF INTELLECTUAL PROPERTY RIGHTS AGAINST INFRINGEMENTS COMMITTED BY THIRD PARTIES

4.1Oppositions and cancellation actions

Monitoring of trademarks and designs filed by third parties / Filing opposition proceedings and cancellation actions in order to obtain the withdrawal and cancellation of identical or similar trademarks filed by third parties / Filing cancellation actions to get the withdrawal of designs filed by thirds.

4.2Pre-litigation actions

Drawing up of warning letters and cease and desist letters.

4.3Litigation

Implementation, control and follow-up of lawsuits in France and worldwide concerning mainly trademark, design and copyright infringements (counterfeits and fraudulent imitation) but also unfair competition acts, passing-off and parasitism.
Recovery of damages

4.4Administrative actions against trademark, design and copyright infringements worldwide (anti-counterfeit proceedings)

Actions against counterfeits in cooperation with local administrative authorities including the Customs in France and worldwide, the DGCCRF (in France), the Police, the Trading Standard Office (U.K), Guardia di Finanza (Italy) and the Administration for Industry and Commerce (China).

. Investigations
. Examination of the suspected counterfeit products
. Drawing up witness statements
. Undertaking legal seizure actions and raids
. Ascertaining the destruction of infringing goods.

Contacting and keeping up a good relationship and active cooperation with the customs authorities and administrative organizations in numerous countries: meetings, making them aware of our clients’ concerns about counterfeit goods, preparation of specific brand’s files with our clients’ trademarks and designs on which the authorities shall focus.

4.5Conflicts on the Internet

Implementation of conflict settlement procedures between Internet domain names and trademarks: negotiation and initiation of the Uniform Dispute Resolution Policy to settle any conflicts and to get the domain names registered by third parties, placed on hold or transferred.

5)- AGREEMENTS

Negotiation and drafting of diverse agreements (including license, assignment, coexistence and settlement agreements) and proceeding with the recordal formalities of these agreements before the Offices, when required.

6)- AUDIT OF INTELLECTUAL PROPERTY RIGHTS AND DUE DILIGENCE

Analysis and evaluation of portfolios of intellectual property rights notably in the context of due diligence.

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