Trademarks
Trademark protection is the most active area of our practice. We advise on the selection, registration, prosecution, defence and commercial exploitation of trademarks and trade names across European, Latin American and African jurisdictions, as well as under the international systems administered by WIPO.
Scope of work
Searches & clearance
Availability searches and clearance opinions before adoption of a new mark.
Registration & filing
Registration before EUIPO and OEPM, international registration under the WIPO-administered Madrid System through the appropriate Office of origin, and national filings across Latin America and Africa through coordinated local counsel.
Prosecution
Response to office actions, examiners’ refusals, third-party observations and absolute grounds objections.
Opposition & disputes
Opposition proceedings, cancellation actions, invalidity actions and revocation proceedings, acting for both opponents and applicants.
Watching
Trademark watching services: ongoing monitoring of new applications that may conflict with the client’s portfolio.
Renewals & maintenance
Renewals, recordals of assignments, changes of name and address, and ongoing portfolio maintenance.
Licensing & assignment
Trademark licensing, coexistence agreements, assignment and security interests.
A single point of contact coordinates the entire matter from clearance to renewal.
When to engage us
Launching a new brand
A new business launching a brand into the European market and needing clearance and registration.
Latin America into Europe
A Latin American company expanding into Europe and seeking efficient regional coverage through the Madrid System.
Europe into new markets
A European business entering Latin American or African markets and needing coordinated national filings.
Managing a portfolio
A holder of an existing portfolio that requires consolidated management, watching and renewal across multiple jurisdictions.
Jurisdictions
Representation before EUIPO and OEPM, directly where our professionals are entitled to act and otherwise through qualified representatives. International filings through the WIPO Madrid System via the Office of origin where required. Coordinated representation before national offices in Latin America, Africa and the rest of Europe through correspondent counsel.