24 Sep
2021

Atlan & Boksenbaum

Atlan & Boksenbaum

Q. The firm prides itself on becoming expert in its clients’ industries, enabling it to develop concrete and pragmatic responses. In practice, how is this industry-specific know-how developed?

A: Our clientele operate in the ready-to-wear, cosmetics, tobacco (and associated products), restaurant, entertainment and hotel industries, among others. Each sector is governed by specific legislation, which has an impact on clients’ filing strategy and how they defend their patent rights.

We therefore attach great importance to familiarising ourselves with our clients’ professions in order to target and anticipate their needs for trademarks and/or design protection. This is done by communicating regularly about their professional domains and projects and keeping abreast of current events in their markets.

Finally, we ask our patrons to train us in order to familiarise us with their products and services, as well as potential business or brand developments.

Q. What would you say is the one key factor to success when managing a trademark and designs filing practice?

A: We believe that good management tools, stringent organisation, thorough knowledge of our clients’ professions and needs, and anticipation and reactivity are crucial.

However, the single essential factor is knowing how to implement strategies for the protection of trademarks and/or designs, which are adapted to each of our clients. We have often seen brands arrive in our offices with portfolios full of duplicates and trademarks which are completely unsuitable to their needs, but that also lack crucial filings. We have therefore developed the following rules:

  • to protect, but only that which needs to be protected;
  • to maintain industrial property titles, but only those that are relevant;
  • to monitor in order to act upstream at minimum cost; and
  • above all, to listen to our clients.

Over time, we have become expert at optimising our clients’ portfolios. This win-win strategy has enabled us to earn our clients’ loyalty over the years.

Q. What is your assessment of the EUIPO’s performance over the past year and are there any areas that could be improved?

A: The past year has been unusual to say the least. During the first days of the covid-19 outbreak, we feared an upheaval of, and a certain degree of confusion in, pending procedures for our clients’ European trademarks. Fortunately, the EUIPO and all of its associated organisations displayed an absolutely exceptional capacity to adapt. It swiftly informed its users of certain extended deadlines and examiners contacted us directly when necessary.

Similarly, because of Brexit, the EUIPO has had to facilitate the transformation of European industrial property titles into national UK titles and communicated reliable, precise information to its users in order to simplify this transition which could have been very tricky.

However, if a channel of improvement must be singled out, we would highlight the purely technical aspect of the tools deployed by the EUIPO, whose technical performances are sometimes disappointing. For example, it is occasionally difficult to download certain documents or finalise research conducted on the basis of TM VIEW data.

Q. Finally, how do you see the EU trademark landscape changing over the next five years?

A: Before looking forward to the next five years, it is worth examining the past five. The office’s statistics show a constant, substantial increase in European trademark registration requests, including over the past year, despite difficult economic circumstances.

This trend is reflected in our firm, as requests for the registration of European trademarks are continuously increasing. We hope that this growth will continue over the next five years, and look forward to the publication of the EUIPO 2025 strategic plan.

Indeed, given the EUIPO’s determination to modernise its services and tools, European trademarks are in a strong position to make their presence increasingly felt in the global trademark landscape.

Atlan & Boksenbaum

5, Rue Saint-Didier

Paris 75116

France

Tel +33 1 45 00 05 10

Fax +33 1 45 00 05 11

Web https://www.atlan-boksenbaum.fr

Alexandra Atlan-Elhaik

Partner

Nathalie Boksenbaum

Partner