Prior to any trademark filing, it is essential to undertake a clearance search among existing rights : trademarks, company names, Internet domain names, titles of the Electre database and titles of the Registre du Centre National de la Cinématographie. Internet cannot be disregarded, insofar as recent judgments show that a domain name can, under certain conditions, anticipate a trademark.
Only an Industrial Property Attorney can provide you with a thorough and reliable analysis of the risks attached to the filing of your trademark based on the results of the search.
The next step is to determine the classes in which the trademark will be filed and to formulate the best wording of these classes as to guarantee the best possible protection of the trademark. There again, appointing an Industrial Property Attorney is essential, as these preliminary steps determine the extent of protection granted to the trademark.
In order to simplify trademark filings and clearance searches on an international level, the international classification of products and services or « Nice Classification » was adopted.
It is divided into 45 classes, including 34 product classes and 11 service classes.
When filing a trademark, the choice of the products and services in the classes in which the trademark is filed determines the extent of its protection. Certain products or services pertain to distinct classes, the classification has only an administrative value. This choice will be made considering the activity of the company, knowing that taxes attached to the filing of a trademark increase in relation to the number of classes selected.
The protection of a trademark abroad can be obtained by several procedures:
- National filings made in the countries where the protection is desired. It is necessary to get in touch with the different national offices to learn about their filing procedures.
- An international procedure under the so-called Madrid Agreement uniting 65 countries around the world, including the United States, Japan, the United Kingdom, Sweden and Turkey. You only file one application for the countries belonging to the Madrid Agreement and Madrid Protocol. The process is simplified but the application follows a national examination procedure. The cost for an international procedure depends on the number of countries chosen.
- A community trademark, valid in all the territories of the European Union, that can be obtained by a single filing and procedure. The application has to be made before the Office for Harmonisation in the Internal Market (OHMI), directly or indirectly through the INPI.
Our practice is recognized and renowned for its skills and expertise in New Technologies, and especially as far as the protection of trademarks on the Internet is concerned.
We have developed a complete domain name protection service which has already proved its efficency and allowed us to recover many domain names registered by cybersquatters in infringement of our clients' trademark rights, either out of court or following an arbitration procedure.
We have also set up new trademark watch services:
- among Internet sub-domain names;
- among auction websites like eBay and Yahoo !;
- among advertisements proposed by Overture, Miva, and Google (commercial links).
Furthermore, Nathalie Dreyfus is an expert with the Arbitration and Mediation Center of the World Intellectual Property Organisation in Geneva and regularly renders decision in court. She was the first French expert named by the new Czech Arbitration Court competent for .eu (Europe) domain names.
Registration rules differ according to the extension chosen:
- The so-called « geographical » domains, of national scope (ccTLD); these are the .fr (France), .de (Germany), .it (Italy) or .co.uk (United Kingdom). Since December 7th, 2005, the European Union created its own extension on the web : the new .eu domain.
- The « generic » domains, of international scope (gTLD); these are, for instance, the .com (for commercial activities), .mobi (for consumers and providers of mobile products and services) or .org (for associations and organizations).
To register a .fr, .tm.fr, and .re (Reunion Island) domain name
Anyone interested may reserve a domain name by the intermediary of an Internet provider accredited by the Association Française pour le Nommage Internet en Coopération (AFNIC). Our practice will be happy to handle these procedures and the following ones, in your name with the qualified providers.
To register an .eu domain name
Registration procedures must be arranged through an Internet provider accredited by the EURID association.
To register a .com, .net, .org, etc., domain name
Registration can be carried out « on-line » through registration offices (« the Registrars ») authorized by the regulating authority of « generic» domain names, l'ICANN, according to the « first come, first served » rule.
Before registering any domain name regardless of extension (.com, .fr ...), one has to make sure that the domain name considered is available on the web and undertake a prior clearance search in the national trademark (RNM) and business name (RNCS) registers, to avoid conflicting domain names.
It also has to be noted that the « first come, first served » rule applies to domain names: the first one to ask for the attribution of a domain name will be the one entitled to it, provided that the criteria inherent to the extension are complied with.
The UDRP procedure (Uniform Dispute Resolution Policy) of WIPO (World Intellectual Property Organisation) was adopted by the ICANN to settle disputes regarding domain names.
It is an arbitration procedure, quick and limited in cost, that can help to avoid going to Court. The UDRP procedure applies to the gTLDs (.com, .org, .net...) and some ccTLDs (.fr, .ch, .es...) that have adopted it.
Our practice favors negotiation and out-of-court settlement in any dispute, this allowing the considerable official court costs to be avoided.
If an internet domain name reproduces a trademark previously filed by one of our clients, we contact the holder of the domain name to propose an out-of-court settlement. We have already settled numerous disputes by this procedure.
If the domain name holder doesn't seem willing to find an amicable solution to the dispute, we help our client, owner of the prior trademark rights, to draft a complaint and lodge it at the Arbitration and Mediation Center of the WIPO or before the Courts.