Simont Braun - Avocats advocaten lawyers

Trademarks Domain names and Geographical Indications

Branding products and services in a competitive market is of fundamental importance in several respects. A trademark, a company name, a trade name, a domain name - not all such distinctive signs are equal under the law and therefore require adequate protection. Like any other IP asset, these IP rights are also the subject matter of complex transactions (transfer, licenses, securities, etc.).

Among them, the trademark is undoubtedly the most important distinctive sign for expanding and consolidating a business at the European level or in an even wider context. Competition rules and exceptions to the free circulation of goods and services in the EU must be taken into account.

Collective marks, certification marks and geographical indications (not only in the food sector) are also useful tools for enterprises and deserve special attention.

Our fields of expertise

We guide clients through the identification of the most appropriate protection while taking into account their global strategy and objectives in light of the multiplicity of applicable legal regimes. During the course of this process, we cooperate with communications agencies and the other professionals involved.

Our team notably acts in the administrative and judicial review of the Benelux and European IP offices' decisions when they refuse the registration of a trademark or when a dispute arises between competitors (opposition, cancellation, etc.).

Simont Braun has an outstanding track record in trademark litigation and enforcement, handling important infringement cases for well-known trademarks and major industries in various sectors (luxury goods, food, retail, industry, pharmaceuticals, etc.).

We represent our clients before the Benelux Office, the EUIPO, all Belgian courts (including the Supreme Court), the Benelux Court, the EU General Court and the European Court of Justice. We have in-depth experience in proceedings before the EU General Court and the European Court of Justice: our team has already handled more than thirty trademark proceedings in Luxembourg and handled one of the first mediation proceedings before the EUIPO.

Whenever possible, we exploit alternative channels of dispute resolution, including domain name arbitration. We are also experienced in administrative procedures relating to trademarks and geographical indications, cross-border injunctions and customs procedures.

Finally, our team handles complex agreements involving trademarks and other distinctive signs, where applicable in close collaboration with our Tax and Corporate teams.

Some recent projects

  • Appeals against EUIPO's decisions before the EU General Court and Court of Justice in various litigations over trademarks (inter alia for well-known trademarks in the luxury goods and mineral water sectors), refusals of registration, oppositions, invalidity and required use issues; some recent cases: T-312/16, T-248/16, T-625/15, etc.; see also C-344 and 345/10 P, and preliminary ruling procedures before the EU Court of Justice regarding trademarks (e.g. C-375/97);

  • Handling descriptive seizures and infringement procedures before Belgian courts;

  • Successfully defending clients before the Belgian Supreme Court in cases regarding the repackaging of pharmaceutical products imported from another EU Member State;

  • Successfully assisting, before the Belgian Council of State and the EU Commission, a group of food producers seeking to register an EU Geographical Indication, notwithstanding the opposition of producers outside the protection zone;

  • Coordinating trademark litigations in France, Germany, Italy, USA, Netherlands and HongKong for a well-known disruptive watch manufacturer.

Market recognition

WTR 1000: Silver band
IP Stars: Trademark Contentious: Tier 1