Séverine E. Mas Avocat

Trademark filing strategy

Performing searches prior to filing a new trademark is a very important step of the procedure. If there is a risk of confusion, a multilingual lawyer can determine the level of risk, and propose solutions.

International filing can be done according to two methods:

• directly with the national offices,
• via the Protocol or Arrangement of Madrid (the Madrid Treaties relating to trademark registration).

For countries in the European Union, it is preferable to register before the OAMI. The OAMI is responsible for registering community trademarks and community designs if the mark is available. Registration of the mark by a third party in other countries of the EU could, in the future, prevent or impair the exploitation of the trademark if the registration does not cover the whole community.

The consequence of this is that the brand will not be able to be exploited abroad. When the future development of the business is concerned with several european countries, it is less costly and more advantageous to register with the OAMI from the beginning.

Costs

Services include:

• Identification of products and services of the application
• Identification of international classes
• Drafting of the application
• Filing of the application

The applicable taxes before the OAMI for an European trademark are 750 euros for an online filing for three classes of products and services. The taxes in France are 225 euros for three classes. A free quotation for proposed work can be sent upon request. Services start from 200 euros for a registration in France, 550 euros for a registration at the European Office for trademarks and designs.