If you are considering legal actions related to intellectual property, it is important to understand the difference between a patent specialist and a specialist in trademarks, designs, etc., otherwise known as a soft IP specialist. Both work with individuals, companies and other entities to ensure and optimize the protection of their intellectual property rights. However, they specialize in different areas of IP law.
Patent specialists assist clients in obtaining, protecting and enforcing their patent rights. They are familiar with the complex regulations surrounding patents and can advise clients on how to comply with the relevant laws. They also assist clients in drafting and filing patent applications, as well as conducting searches to determine the patentability of an invention. These are known as prior art searches, which are also found in other areas of intellectual property law.
Soft IP specialists focus on the broader spectrum of IP law. They provide advice on legal issues related to copyright, trademark, designs, domain names, etc.
They negotiate for their clients and can help them resolve various types of litigation: Internet infringement, subsequent trademark that imitates the one the client has protected. Additionally, they often provide advice on how to protect IP rights and enhance their value (via a trademark license, for example).
Therefore, it is necessary to turn to the right interlocutor; of course, firms may have several departments and be specialists in several fields: patents, software, Internet, trademarks, etc.!
By knowing the qualifications and specific areas of expertise of each specialist, you can be sure to choose the right person to handle a case. However, an IP attorney will of course refer you to one of his colleagues if your IP problem does not fall within his field of expertise.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
Intellectual property (IP) is an important asset for any company. It is the creative expression of an idea, an invention or a brand. It is essential to protect your IP rights in order to ensure a monopoly of exploitation on your creations. Whether you are a business owner, an inventor or an artist, it is important to understand how to protect your IP rights. This article will provide an overview of the steps to follow to protect your rights.
The first step in protecting your IP rights is to understand what intellectual property is. This includes copyrights, trademarks, patents, designs and trade secrets. Copyright protects literary and artistic works, such as books, paintings, music and films. Trademark law protects a sign: it can be verbal but it can also be a logo or a sound sign such as a jingle. Patent rights protect inventions and trade secrets protect confidential business information.
Once you have identified the type of intellectual property you own, the next step is to register that asset. Apart from copyright, which arises with a work of the mind, intellectual property rights must be registered with the office in the country where you wish to be protected. For example, the INPI is the competent office for French trademarks, patents and designs.
Once this registration has been made, you will have an intellectual property right that will allow you to defend your creation in case of infringement. You will be able to exercise this right as you wish: for example, you will be able to conclude contracts on this right in order to be remunerated for each authorized use.
Concerning the business secret, it is usual to protect it by a confidentiality agreement. This contract will allow you to take legal action if your co-contractor violates its obligations.
Therefore, these IP rights will give you the means to defend your rights: first of all in a pre-litigation means by a letter of formal notice, then in a litigation manner, by taking legal action. It will be important to call upon a lawyer or counsel specialized in intellectual property and experienced.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
Intellectual property law is an ever-evolving field that covers a wide range of legal matters related to copyrights, trademarks, patents, trade secrets, and other forms of creative works. In today’s digital age, understanding the nuances of intellectual property law has become increasingly important for businesses, entrepreneurs, and individuals.
What about trademark law?
Trademark law considers an exclusive right of use on a sign which can be verbal or figurative. The trademark has a function of identification of origin: it indicates to consumers the origin of the goods and services covered by the trademark.
A lawyer or attorney specializing in trademark law will be able to help you register a sign and provide you with advice and establish an effective strategy so that your trademark is protected against infringement. Thus, the trademark lawyer or attorney will be able to accompany you in the defense of your trademark against various infringements.
What about patent law?
Patent law was designed to protect inventors from unauthorized use and reproduction of their inventions. A patent gives its owner an exclusive right to use an invention. This invention can take different forms: it can be a product invention or a process invention.
A patent lawyer or attorney will be able to help you file a patent application and provide advice on how to best protect your invention from unauthorized use. This includes advice on how to properly use your invention and what to do if someone infringes on your right.
What about trade secrets?
Trade secrets are designed to protect businesses from unauthorized disclosure of confidential information. Trade secrets can include formulas, processes, recipes, customer lists and other confidential information.
An attorney or counsel who specializes in trade secret law can help you to protect your confidential information and provide advice on how to prevent unauthorized disclosure of those trade secrets. This includes advice on how to properly use your trade secrets and what to do if someone infringes on your rights.
In conclusion, intellectual property law covers a multitude of matters: copyright, trademark law, patent law, trade secrets and design law. Contacting a lawyer or attorney competent in the field is essential in order to best protect your intellectual property rights.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
Protecting your copyrights, trademarks and other forms of intellectual property is essential to the success of your business. Therefore, it is important to understand the cost of effective protection. How much does an IP lawyer or attorney cost in the EU?
The cost of an IP lawyer or attorney in the European Union depends on several factors, including the expertise in question, the experience of the lawyer and the location of the lawyer. Some attorneys will charge for their services on a flat fee basis while others will charge on a time basis.
The cost of an IP lawyer or attorney in the European Union depends on several factors, including the expertise in question, the experience of the lawyer and the location of the lawyer. Some attorneys will charge for their services on a flat fee basis while others will charge on a time basis.
The complexity of the case and the amount of work required will also influence the cost of the service. When searching for an IP lawyer in the EU, it is important to consider the experience and reputation of the IP lawyer or attorney. A lawyer who has handled similar cases in the past will have a better understanding of the legal process and framework and will be more likely to provide effective representation.
Furthermore, it is important to choose an attorney who is familiar with the laws and regulations of the country where your business is located. Once you have chosen an intellectual property lawyer, it is important to determine the cost of their services.
Many attorneys will offer a free initial consultation, which can be a great way to get a sense of future fees. The attorney will be able to provide you with an estimate of their fees, or a detailed quote, as well as any additional costs associated with, for example, trademark filing fees or foreign agents that may be required.
In addition to legal fees, an IP attorney may also charge for any additional services they provide. This may include searching EU law, drafting documents or providing expertise. The cost of these services will vary depending on the lawyer and the services they provide.
When it comes to protecting your intellectual property rights, it is important to hire a qualified and experienced attorney or counsel. The cost of an IP lawyer or attorney in the EU can vary, but it is important to ensure that your lawyer is experienced, competent and able to provide effective representation.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
In the European Union (EU), intellectual property rights are regulated by two offices: the European Intellectual Property Office (EUIPO) located in Alicante and the European Patent Office (EPO) located in Munich. Therefore, as an ordinary person or legal professional who owns an intellectual property right, you will probably need to hire a lawyer specialized in intellectual property in order to best protect. However, does this lawyer have to be licensed in the EU to practice? This means that if you are a company or an individual who owns intellectual property rights, you may need to hire an intellectual property lawyer to protect you and your business. Then it is important to consider, does that lawyer have to be licensed in the EU?
In short, the answer is no. An IP lawyer does not need to be licensed in the EU to practice. However, there are certain requirements that must be met to practice in the EU Primarily, an attorney must have a valid license in the jurisdiction where he or she practices. This license must be issued by the competent authority of the jurisdiction.
Secondly, the lawyer must have a valid professional qualification in intellectual property law. Furthermore, this qualification must be recognized by the EPO. The lawyer must also be a member of a professional body recognized by the EPO.
Finally, the lawyer must be registered with the EPO. This registration requires the provision of certain documents, including a valid license and a professional qualification in intellectual property law. Once the registration is complete, the lawyer will be added to the register of intellectual property lawyers authorized by the EPO. The lawyer will also be required to meet the ethical standards established by the EPO. These standards are set out in the European Patent Convention, which is the legal framework that governs intellectual property law in the EU and more specifically patent law.
Overall, an IP lawyer does not need to be licensed in the EU to practice. However, he must meet certain requirements to practice in the EU, including having a valid license, a valid professional qualification and being registered with the EPO.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
An intellectual property lawyer or attorney specializes in the protection and enforcement of intellectual property rights. Intellectual property (IP) rights protect intangible objects, such as inventions, intellectual works or trademarks. Depending on the country, these rights are governed by federal, state and international laws.
An intellectual property lawyer is an expert in the various fields of intellectual property law: patent law, trademark law, copyright law and design law. Thus, they are able to help their clients protect their ideas and creations against potential infringements. For example, an intellectual property lawyer or attorney can help a person or a company to file a patent or a trademark. They can also assist a client in the management of their copyrights. Finally, the lawyer specialized in intellectual property can take the necessary measures and act if necessary to prevent infringements.
One of the main services provided by a lawyer or attorney specialized in intellectual property is the filing of a patent application. A patent gives its holder exclusive rights to exploit an invention for a period of 20 years. The lawyer specialized in intellectual property will then be able to help you to establish a general and global strategy of defense of your invention in order to ensure it is protected.
Another service that can be provided by a lawyer specialized in intellectual property is the registration of a trademark. Just like the patent right, the trademark right refers a control of possible exploitation of the sign. The trademark is a distinctive sign allowing to link products or services to the company from which they originate. The lawyer or intellectual property attorney can help a person or a legal entity register a sign as a trademark and then defend this trademark against infringements.
In addition to assisting in the creation of a trademark or patent right, an intellectual property lawyer can ensure that the right in question is respected. For example, an intellectual property lawyer will be able to negotiate a license agreement for an intellectual property right, to act in case of infringement and to help a person in the legal sector this copyright, etc.
Finally, an intellectual property lawyer can provide advice and guidance to clients on how best to protect their intellectual property assets. They can help clients to understand the various aspects of intellectual property law and provide advice on how to best protect their ideas, designs and inventions from theft or misuse.
Intellectual property (IP) lawyers and attorneys provide a variety of services to help protect a company’s or individual’s creations and inventions from being copied or misused. IP lawyers and attorneys specialize in the legal protection of copyrights, trademarks, patents, and trade secrets. These four areas of IP law are the main focus of IP attorneys, but they can also provide other services related to IP rights, such as drafting licensing agreements, infringement actions and litigation strategy.
When it comes to copyright protection, IP lawyers and attorneys assist their clients in drafting and negotiating copyright agreements, such as transfer and license agreements. In addition, they can help prevent and protect their clients from potential copyright infringement.
When it comes to trademarks, IP lawyers and attorneys can help their clients register their trademarks in France and in the European Union with the EUIPO. They can also assist their clients who would like to register their trademarks internationally and specifically, in the United States, thanks to their partnerships with other firms. Moreover, they can also advise their clients on how to protect their trademarks against infringement and how to enforce their rights against those who infringe their trademarks.
Furthermore, patents are another area in which IP lawyers and attorneys specialize. An IP attorney can assist a client in filing and prosecuting a patent application. They can also help with patent infringement and licensing disputes.
Finally, IP lawyers and attorneys can help clients protect their trade secrets. They can advise clients on how to protect their trade secrets, such as implementing confidentiality agreements, patents, and non-disclosure agreements. Additionally, they can help clients enforce their trade secrets against those who attempt to use or disclose them without authorization.
In addition to the above services, IP lawyers and attorneys also provide other services related to IP law. These services can include conducting IP audits to identify potential IP issues, providing IP licensing advice and assistance, filing IP litigation, and providing IP training.
In conclusion, IP lawyers and attorneys can be valuable assets to businesses and individuals who wish to protect their intellectual property. As mentioned above, an IP attorney can provide a multitude of services to help protect copyrights, trademarks, patents and trade secrets. Attorneys and lawyers can be involved at the outset of a client’s project, but also throughout the project’s life and in the event of litigation.
An intellectual property attorney is a lawyer specialized in intellectual property law, who has a mission to support the protection of intellectual creations. Intellectual property law includes industrial property such as patents, trademarks and designs, as well as literary and artistic property. Intellectual property lawyers have a unique set of skills and knowledge related to filing, drafting contracts, as well as litigation related to intellectual property rights.
The purpose of an intellectual property lawyer is to assist individuals and businesses in protecting their intellectual property rights. This includes providing legal advice and representation to clients involved in the development, protection and enforcement of their intellectual property rights, primarily in the areas of patent, trademark, design and copyright.
Patents: A patent is a government grant that gives the owner exclusive rights to make and sell his invention. To obtain a patent, you must file a patent application with the national or regional Intellectual Property Office and meet the criteria for patentability including novelty, inventive step and industrial application. An intellectual property lawyer can assist in the patent application process, as well as in the application of a patent.
Trademarks: A trademark is a sign that distinguishes the products or services of a company from those of its competitors. The trademark can be a word, a name, a logo, etc. or a combination of these elements. Being one of the industrial property rights, it is necessary for the owner to file the trademark application with the coorect office. In order to be registered, the trademark must also meet certain criteria, including availability, distinctiveness and lawfulness. Trademarks have a central place in the work of intellectual property attorneys because they are important assets and the capital of companies.
Designs: Intellectual property lawyers also assist clients with the protection of designs. They protect the appearance of a product or part of a product characterized by lines, contours, colors, etc.
Copyright: Copyright is the legal protection of an original work expressed in tangible form. Copyright protects not only literary works, but also musical, graphic, and sound creations, as well as software and applied art. Although copyright is automatically protected without procedures, it is recommended to file the application for registration. An intellectual property lawyer can assist in the registration and enforcement of a copyright.
An intellectual property lawyer is an important asset for individuals and companies seeking to protect their intellectual property. The role of intellectual property lawyers contributes significantly to the development of technology as well as the economy.
This article is current as of the date of its publication and does not necessarily reflect the present state of the law or relevant regulation.
The Legal Expert’s role is to give an opinion on precise technical points. He or she can be designated by the Judge or by parties to the proceeding. Legal experts are present in all fields where a technical opinion may be required, for example for medicine, architecture, law, which of course includes Intellectual Property law.
What is the “specific” role of the Legal Expert in Intellectual Property?
Technicality and technicity are at the heart of intellectual property. Innovation and creation are the essence of this subject. Therefore, resorting to Experts is often mandatory to analyze, explain or interpret an Inventor’s invention or a Creative’s creation from a technical point of view.
For example, the Legal Expert in Intellectual Property may be called upon to evaluate the prejudices caused by an infringement of an Intellectual Property Right, which are often difficult to estimate, particularly in the case of Trademarks. More generally, the expert may examine the technical evidence or question parties in order to provide an impartial opinion.
It is important to note, that the judge is not required to follow the Expert’s recommendations, however they may rely on the Expert’s report or testimony at the hearing as a basis for their decision.
How are Legal Experts in Intellectual Property appointed?
There are two distinct ways to designate a Legal Expert during a legal proceeding.
Firstly, a Judge will call upon the experts registered on the National lists. The Experts are specialized and there are several lists available that classify Experts by specialty and subspecialties. . One list is made by the French Cour de cassation (Supreme Court) and there is also one list via the Appeal Courts. Secondly, the parties to the proceeding may also directly contact a Legal Expert of their choice. This Expert may not be on the lists of the Cour de cassation or the Appeal Courts. In this case, the Expert will have to take an oath before a Judge at the time of the hearing.
What is the role of Dreyfus & associés ?
Dreyfus is an Industrial Property law firm based in Paris.
Nathalie Dreyfus, founder of Dreyfus & associés, is a registered Legal Expert before the Paris Court of Appeal for specialty E.09.02 Industrial Property – Trademarks. In December, 2022, she was named as a Legal Expert before the French Cour de cassation (Supreme Court) for the same specialty.
The Legal Expert in Intellectual Property is above all a technical and Legal Expert in one or more Intellectual Property specialties, having several years of experience practicing Intellectual Property Law.
The process involves the Legal Expert intervening in a legal proceeding to provide their expertise on a Trademark, a Patent or a design’s technical aspects and in so doing, they help the Judge to motivate towards a decision.
For further information, do not hesitate to contact us:
contact@dreyfus.fr.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
Paris Judicial Court, 3rd section, April 5, 2022, 20/12763
Sun Consulting SARL and M. Y W vs H&M Hennes & Mauritz LP et H&M Hennes & Mauritz SARL
In a judgment dated April 5, 2022, the Third Chamber of the Paris Court of Justice ruled on an infringement action between the European Union trademark “CREMIEUX” covering clothing, footwear and apparel products and the trademark “RUE CREMIEUX” under which perfumes are marketed.
In this case, despite the plaintiffs’ argument that stated that clothing and perfumes were similar goods regarding their complementarity and the close connection of their aesthetic function, the Court rejected the infringement action for lack of similarity between these products.
The owner of a trademark may prohibit the use, without their consent of a sign identical or similar to their trademark by a third party. This is to be noted in such circumstances, for example
• when such use occurs in the course of a trade,
• when relating to identical or similar goods and services to those for which the trademark has been registered and
• when there is the possibility for a likelihood of confusion, ie. undermining or initiating liability that could undermine the guarantee of the identity of origin, which is an essential function of the trademark.
Although French and European courts regularly encounter the issue of similarity between perfumes and clothing, uncertainties persist concerning the assessment of this similarity.
Which factors should be used to assess the degree of similarity between goods?
On several occasions, the Court of Justice of the European Union has stated different relevant factors to be used in assessing the degree of similarity between goods or services. The nature, purpose, use, distribution channels, or the competitive or complementary nature of the goods or services concerned, are taken into account.
Nevertheless, if such criteria is lacking, the European Court of Justice admits that a degree of similarity can remain if the goods present a certain aesthetic complementarity.
This complementarity will be retained when three cumulative conditions are fulfilled.
i) One product must be indispensable or important over the use of another.
ii) Consumers must consider the use of the goods together as usual and normal.
iii) Consumers must consider it common place for these goods to be marked under the same trademark.
The Court of Cassation (Supreme Court) adopts a different approach in comparison to that of the Court of Justice, whereby they look at whether the consumer is able to attribute to a common origin the goods and/or services at issue. However, if this interpretation is applied too widely, it could lead to qualifying goods as similar, thereby confirming that a risk of confusion is not altogether impossible or out of the question.
Even though the condition of trademark infringement must be interpreted in light of the risk of confusion, Article 9 of Regulation 2017/1001 states that the concept of similarity is both a necessary condition and an interdependent criteria of the risk of confusion. Therefore, the similarity of goods or services cannot depend on the possibility of a likelihood of confusion as it is the latter that depends in part on the similarity.
Can perfumes and clothing be considered similar goods under these factors?
In the present case, the Third Chamber of the Court of First Instance, considers that clothes and perfumes do not share the same nature or purpose and are not usually sold in the same stores.
Although they may have a similar function of enhancing the wearers appearance, this function is secondary and not convincing.
The primary function of clothing obeys and follows the rules of a purely functional purpose while perfume has for finality, the diffusion or intermingling of a pleasant smell. Therefore, the common use of both clothes and perfume during daily outdoor activities is not sufficient enough to characterize a relevant factor of similarity.
But what about aesthetic complementarity?
The Court found that perfumes were not important or even indispensable for the use of clothing, and that clothing was not important for the use of perfumes either.
This judgment may seem surprising regarding the jurisprudence issued by the Court of Appeal on the similarity between perfumes and clothing.
Indeed, in a decision dated September 23, 2021, the Court of Appeal of Aix-en-Provence had recognized as justified, the opposition to the registration of a trademark filed with the INPI for clothing. This was purely on the basis of an earlier trademark registered for perfumes and cosmetics.
The decision by the Court of Appeal was mainly based on the presence of identical distribution networks.
The Court of Appeal also attributed a significant role to the aesthetic function, which, according to the Court of Justice, cannot be considered as a sufficient factor.
This trend, which aims to make the principle of speciality more flexible, is mainly reflected in the luxury sector where well-known trademarks are very present.
In consideration of this fact, many decisions recognize the similarity between goods in class 3 (perfumes and cosmetics), goods in class 25 (clothing) or even classes 14 (jewellery) and 18 (leather goods).
Indeed, houses such as Louis Vuitton or Maison Margiela offer both clothes for sale and, to conquer a wider audience, perfumes. However, this diversity of products can also be found in non-luxury brands, with different ranges, such as Zara or Lacoste.
In this judgment, the Court of Justice goes against a French jurisprudential trend which qualifies perfumes and clothing as similar. Furthermore, according to the Third Chamber of the Court, the fact that fashion companies market perfumes under their own brand name, cannot be a sufficient factor to make these products similar.
Is it impossible to file an infringement action against a trademark offering perfumes for sale on the basis of an earlier trademark registered for clothing? And is this also the case vice versa?
In retrospect, it must be noted that even though it may not be necessarily so, the decision shows that the chances of success could very well be limited.
Nevertheless, French courts do not yet give a unified and homogeneous answer on this subject and decisions remain casuistic and sophistically cautious.
For example, the Paris Court of Appeal recently ruled in a decision dated September 14, 2022 that there was a risk of confusion between an earlier trademark filed for perfumery and cosmetics and a trademark intended to designate clothing. To determine this similarity, the Court based its decision on the fact that these products belong to the field of fashion, have the same aesthetic function, are targeted at the same clientele and can be marketed under the same trademarks by the same companies and distributed through the same distribution network.
Therefore, we will surely have to wait for the Court of Cassation‘s decision on this matter to obtain a standard and clearer answer in determining and ensuring a more specific and higher level of legal security and protection for trademark owners.
We offer our clients a dedicated and unique experience of expertise that is necessary for the exploitation of intangible assets. We will also endeavor to keep you informed and up-to-date about intellectual property and digital economic issues through our articles and newsletters written by the Dreyfus Legal Team.
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