Trademarks

Our team consists of experienced and highly qualified intellectual property (IP) practitioners with in-depth knowledge of trademark laws worldwide. The team’s focus is to provide practical, realistic advice throughout every stage of a client’s trademark’s lifecycle. To secure our clients’ rights, maintain operational excellence and ensure a high-level of transparency for our clients, we have developed our internal IP management software solution – ‘Skipper’.

We are currently the legal representative for more than 1,000 clients across more than 150 countries, including many of the largest global corporations.

The diverse range of industries we cover includes:

• Automotive
• Consumer products
• Entertainment
• Fashion and luxury brands
• Food and drink
• Manufacturing
• Pharmaceuticals
• Professional services
• Telecommunications.

Overall, we are the legal representative for more than 30,000 trademarks, and monitor approximately 400,000 trademark rights through customised portfolio management services.

Working with MSA IP offers a wide range of benefits, including:

• We will assist you in deciding what to register as a trademark, for which goods and/or services, and on which territories
• We will search for any prior rights and advise about any other factors that may represent an obstacle for your successful registration and use of the trademark, and we will provide advice on how to overcome those obstacles
• We will file and prosecute trademark applications for you
• We will seamlessly manage your entire trademark portfolio, based on best-in-class legal and administrative services
• IP litigation is a core strength of our firm. We routinely litigate and mediate infringement, unfair competition, false advertising, and breach of contract claims involving trademarks and/or trade dress issues.

We can directly cover trademark filings and renewals in more than 30 jurisdictions, including Madrid filings. We can also cover your lifecycle needs worldwide through well-established partnerships with other top-tier law firms. We have in-depth experience in data and document management and legal action drafting, with thorough knowledge of trademark laws and country-specific legal requirements.

Filing a trademark application

Before filing a trademark application, our experts provide legal advice on the registrability of the desired mark and the availability of protection in the territories of interest. With the support of our search team, our experts quickly determine the status of third-party applications and registrations that could represent potential obstacles.

They then provide recommendations on how to avoid obstacles that could delay or stop applications, and obtain fast and effective protection. In collaboration with a leading global search provider in that area, MSA IP also prepares search reports. These reports are offered with or without legal opinion, depending on the client’s need.

Once a trademark application has been filed

After filing the application, our team members provide any necessary legal advice the client needs. We take action to surmount any registration obstacles that have arisen from the activities of the Intellectual Property Offices, interested third parties, or holders of earlier rights.

Our experienced experts offer advice on how to efficiently and effectively justify a request for protection or defend against any unfounded third-party claims.

Whenever possible, we provide support for acquisitions, negotiations and other means of peaceful conflict resolution. We are also available to support our clients to initiate appropriate actions against conflicting applications or registrations (opposition or cancellation actions).

After the trademark is registered, we take care of its timely renewal and we defend it against any third-party claims (cancellation and invalidation actions).