From its creation, or at the latest from the start of negotiations with foreign partners, overseas Trademark protection must be considered.

After the OAPI (2 March 2015), Zimbabwe (11 March 2015), Cambodia (5 June 2015), and Gambia (18 December 2015), it's the turn of Laos to join in International Trademark system as of 7 March 2016.

Given its wide geographical coverage and simplicity, this system is becoming more and more adapted to business development strategies.

OUR EXPERTISE:

  • Advising and assisting you to determine which trademarks to protect. The same trademark, its translation or its transliteration?
  • Deciding which markets, depending on foreseeable evolutions? When to file? If protection for the same trademark is extended to another country
  • within 6 months of the original filing, i.e. priority date, then any foreign filings benefit from the original filing date.
  • Which path to take? Together, we will select the most appropriate path depending on your trademark, prior rights and budget
    • National filing: if the trademark is specifically for one country, or if a country is not a member of any regional agreements among the major countries, China has modified certain fundamental aspects of its Trademark law, and we await more significant changes in 2014/2015.
    • International filing: covering, in one single filing a large number of countries, including the European Union. The selection can be made among the 97 member states/territories. It allows the addition of countries in relation with the economic expansion of your trademark. One single application using this system enables the registration, valid for 10 years and renewable through a single operation, of your trademark. However, the International registration remains subject to the laws of each designated country or territory. Additionally, a National or European Trademark filing is required in order to proceed with the International filing.
    • European Trademark filing (EUTM): for the 28 countries of the European Union, if no other country is envisaged. This system provides 1 registration of a single procedure performed by the EUIPO.
    • Filing with the OAPI for Francophone African countries

It is now possible to cover the following countries through only one filing: Benin, Burkina Faso, Cameroon, Central African Republic, Congo, Ivory Coast, Gabon, Guinea, Guinea-Bissau, Equatorial Guinea, Mali, Mauritania, Niger, Senegal, Chad, Togo, and Comoros. In the OAPI, it is appropriate to carry separate filings depending on whether it refers to products or services in its wording.

  • Filing with the ARIPO for Anglophone African countries

The ARIPO system exists and permits 9 of the 18 countries that signed the Banjul protocol to be designated, they are: Botswana, Lesotho, Liberia, Malawi, Namibia, Swaziland, Tanzania, Uganda, and Zimbabwe, however it is really only effective in the 3 underlined countries.

  • Protection in the Andean Pact countries- Bolivia, Colombia, Ecuador, Peru An agreement concerning these 4 countries alone, which allows a trademark holder registered in one of these countries to oppose an infringement filing in any of the other member countries of the pact.
  • Filing with the Eurasian Economic Union: This treaty, signed on 29 May 2014, initially between 3 member states, entered into force on 1 January 2015, creating a Union which currently consists of Armenia, Belarus, Kazakhstan, Kyrgyzstan and Russia. It establishes a harmonisation between the Intellectual Property Rights systems and introduces a Union Trademark system covering the national trademarks from all the member states
  • Our Network of Foreign Colleagues

We directly perform a number of operations before the French (INPI), EU (EUIPO) and International (WIPO) offices. In other countries we operate via a network of foreign correspondents that we have selected due to their competence, responsiveness and price.

  • Adapting the Protection of your Trademarks to your Markets

We propose reviewing the protection of each trademark depending on market expansion in order to adapt, as necessary, with each evolution, by conducting an audit of your trademarks, domain names, designs and patent portfolios.

Adapting the means of fighting counterfeiting to the extension of your trademarks

Your anti-counterfeiting policy should also be reviewed especially depending on your manufacturing and export markets, and in particular for customs retainer declarations.

Overseas protection of a trademark cannot be improvised but must be the subject of a conscious strategy that is being constantly adapted in relation to the commercial development of the company.