How to defend the brands of ones clients while avoiding getting into an unproductive and long-term litigation as much as possible ?
Summary
A good overall mastery of legal proceedings and administrative procedures before industrial property offices, is essential to define the strategy best suited to the needs of clients who are faced with the need to defend their titles against attacks from competition.
In more detail
Capucin BRAS is the creator of a fast food concept based on the preparation and sale of an original sandwich, consisting of a food cone and qualitative and varied fillings.
This sandwich, called CAPUCIN, has been protected by filing French trademarks with the INPI.
Capucin Bras realized that a company, belonging to a national group, which had used and then abandoned the name CAPUCIN to designate products similar to the Capucin Bras sandwich, intended to relaunch its use and filed this same trademark with the INPI .
Capucin BRAS absolutely had to oppose the registration of this mark but also its use by this company.
The opposition procedure initiated before the INPI by Capucin Bras, and whose success was not in great doubt, was parasitized by the counter-attack initiated before the courts, by his opponent who requested the nullity of the trademark “CAPUCIN” opposed, based on its own prior usage.
This nullity action, which had the effect of suspending the opposition proceedings, had no serious chance of succeeding because, under French law, ownership of a trademark is acquired only by its registration at the INPI.
Problem
However, as much as the opposition procedure before the INPI is fast and does not require incurring significant costs, a legal action is long and more expensive.
The problem was therefore to find a solution to put an end to this procedure as quickly as possible, the main objective of which was for his opponent to encourage Capucin Bras to abandon his opposition procedure.
Solution
The solution was therefore to imagine a procedural strategy sufficiently incisive to incite the adversary to give up this hopeless defense, whose only concrete effect was a deterioration of the situation.
By concluding very quickly before the court seised, in particular by raising the abusive nature of the proceedings initiated by the adversary of Capucin Bras, and by seeking compensation for his damage in a relevant argument from an economic point of view, JUNCA & ASSOCIÉS convinced the other side of the risks associated with pursuing its doomed strategy.
The added value of JUNCA & ASSOCIÉS
JUNCA & ASSOCIÉS is a firm made up of lawyers specializing in intellectual property who are well versed in legal proceedings, and industrial property attorneys, who are very operational with regard to administrative procedures before the INPI.
JUNCA & ASSOCIÉS therefore has a global vision of intellectual property litigation, which allows it to optimize the litigation strategies that it must implement for its clients whose industrial property titles it defends, whether trademarks, patents or designs.
Result
An agreement was reached : the opposing party renounced the registration and exploitation of the trademark “CAPUCIN”, and Capucin Bras obtained reasonable compensation.