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Intellectual Property



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Trademark and design portfolio management

Our IP law firm offer a full range of trademark and design portfolio management services, from filing to registration:

- trademark clearance searches
- French, Community and Madrid system trademark applications
- responses to Office Actions and oppositions
- computerized management of filings and renewals
- watch services for trademarks, company names and domain names
- watch services for registered designs (by Locarno class)
- recordals of assignments and licenses

Our attorneys adapt strategy for clearance searches and filings based on our clients’ particular needs. Our search reports are clear and pragmatic. They always take into consideration the use or non-use of the prior rights identified, the relevant field of activity as well as the availability of corresponding domain names.

We offer our clients design filing services in France, with the OHIM (Community designs) and the WIPO (International designs) as well as with different national offices throughout the world. Our experience in designs as well as our privileged relationship with associate firms across the globe guarantees our clients effective strategic advice concerning their worldwide design filing strategy.

Our litigation experience enables us to represent our clients in opposition procedures before the French Trademark Office, the OHIM and, on appeal, before the relevant courts of Appeal and the European Court of Justice.

We offer our clients watch services intended to monitor any new activities or filings by their competitors. We also provide a design watch service by Locarno class.

Our highly qualified attorneys, privileged relationship with a well-developed network of foreign associates and our up-to-date sophisticated information technology allows us to efficiently and successfully manage large trademark portfolios on a worldwide basis.

Our filing and other administrative fees are fixed and very competitive and our fee structure is adapted to our client’s needs.

 

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Litigation

We handle all types of IP litigation including patents, trademarks, copyright and unfair competition before the French civil and criminal courts.

In trademarks, designs, copyright and unfair competition, our combined prosecution and litigation experience, our extensive knowledge of the civil and criminal procedure, our knowledge of and access to very sophisticated databases (French, ECJ, French Trademark Office, OHIM) and our creative and pragmatic approach guarantees that our clients interests will be defended efficiently and successfully.

Our highly developed network of foreign associates worldwide enables us to handle complex litigation in many different countries. We routinely handle cross border IP litigation with the assistance of our foreign associates, in particular in the EU.

We work closely with the customs authorities and the police to combat counterfeiting and pirating, especially in the luxury goods and pharmaceutical sectors.

We represent our clients in both arbitration and mediation procedures.

 

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Customs Declarations

We work closely with the customs authorities to combat counterfeiting in numerous diverse intellectual property industry sectors from luxury goods to medications:

- preparation, filing and renewal of French and EU customs declarations for the seizure of counterfeit goods
- participation in customs training sessions on behalf of our clients
- representation of our clients before the customs authorities in connection with customs seizures
- negotiations with the customs authorities for destruction of counterfeit goods
- civil and criminal infringement actions following customs seizures

We have an in-depth knowledge of the diverse customs practices in different regions of France.

Our highly developed network of associate firms in the EU enables us to offer our clients customs declaration and anti-counterfeiting services on an EU-wide basis.

We offer fixed fees at very competitive rates.

 

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Legal opinions – analysis of IP rights and risks

Before commencing any litigation, our attorneys conduct a pragmatic legal analysis of the validity of the rights and the potential risks of litigation.

Prior rights searches, investigations of use, if necessary, and a comparison of the party’s opposing rights are conducted throughout the entire world.

Our intellectual property litigation experience together with our in-depth knowledge of the relevant case law (French, ECJ, INPI, OHIM and OEB) allows us to analyse effectively the validity of the IP rights as well as the risks of an infringement or cancellation action.

 

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Trademark due diligence

Our experience with contentious and non-contentious matters allows us to accurately analyse trademark portfolios.

For each audit, we use a team of attorneys supervised by a partner. Our firm has developed a solid reputation preparing clear reports analysing and explaining potential risks to our clients.

We also assist our clients in connection with large financial transactions that involve the transfer of IP rights. Our clients in this domain are investment funds, banks or corporate attorneys seeking assistance from specialised IP attorneys.

 

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Financial valuations

Our firm has developed a solid reputation providing financial valuations of IP rights, in particular trademarks. We provide our clients with precise and complete valuation reports permitting them to understand the exact value of their marks in connection with a financial operation.

We have commenced the preparatory works for the AFNOR norm in the financial valuation of marks.

Our valuation of trademarks is conducted by a team of attorneys supervised by a partner.

 

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Negotiation and drafting contracts

We assist our clients in the negotiation and drafting of all types of contracts in connection with trademarks including:

- assignment agreement
- license agreement
- coexistence agreement
- franchise agreement
- distribution agreement
- sponsorship agreement

We also assist our clients in the negotiation and the drafting of all types of contracts with respect to designs, copyright or related rights including:

- assignment agreement
- license agreement
- publishing agreement
- use agreement
- sponsorship agreement

Our firm has developed a solid practice in the drafting of intellectual property contracts and their efficient and pragmatic negotiation.

 

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Watch services

We systematically offer our clients trademark, domain name and design watching services.

Our reports include our opinion concerning the possibility of filing an action as well as the relevant deadlines.

 
intellectual property information
© Casalonga Avocats 2007-Legal information-Development: Y-media- Cas-P: Graphic designer

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