Office Freylinger: a complementary approach

Your European single entry point

Office Freylinger was established in 1966 and currently employs 40 people, including 12 patent and trademark attorneys.

One of the strengths of Office Freylinger, based in Luxembourg, is the interdisciplinary and international way it approaches its clients’ needs.

There is no strict separation of the patent and trademark departments. Instead, they work together in a complementary approach designed to proactively propose global IP solutions encompassing patent, trademark, domain name and software questions in the main European jurisdictions. Due to regular discussions and exchanges between the patent engineers, lawyers and paralegals, facilitated by the proximity of all those involved, Office Freylinger is able to suggest solutions, including unusual but efficient proposals.

In patent matters, Office Freylinger acts before the European Patent Office and before the national patent offices of Luxembourg, Belgium, France, Germany, Austria, the UK, Switzerland and Ireland, directly from Luxembourg.

In trademark and design matters, Office Freylinger acts before the Community Trademark Office, WIPO and the national trademark offices of Benelux, France, Germany, Austria, the UK and Ireland, directly from Luxembourg.

This unique feature of the firm eliminates the need for recourse to intermediaries, thus enabling Office Freylinger to offer quicker and more efficient management of its clients’ IP rights at lower cost.

Office Freylinger conducts IP audits, and offers services related to change management with regard to IP rights and IP management, combining the strength and experience of its patent and trademark attorneys.

Office Freylinger has co-authored the book Intellectual Property in Luxembourg, dealing with the management of IP rights, in collaboration with Deloitte.

An IP hub

Companies and individuals holding IP rights are more and more frequently looking for safe and efficient harbours in which to place their rights.

Since 2008, with the active participation of Office Freylinger, Luxembourg has put in place a very flexible and broad IP tax regime, encompassing patents, trademarks, registered designs, software copyright and domain names.

By advising its clients on the practical application of this IP tax regime, Office Freylinger allows IP owners to maximise the exploitation and management of the above-mentioned eligible IP rights by granting an 80 percent tax exemption on the net revenues generated by the IP rights.

"Office Freylinger has developed specific services to support companies in managing their IP rights, including contract drafting, the management of IP rights transfers to Luxembourg."

The experts of Office Freylinger help their clients in determining the conditions and in setting up the legal basis required for this exemption. They assist clients in defining the revenue flows, of which 80 percent of the revenues, minus costs linked to the generation and protection of IP revenues, are totally exempt from taxation. Only 20 percent of net IP revenues are subject to the usual taxation of about 30 percent. This IP tax regime therefore allows for the taxation of net IP revenues at an actual rate of around six percent. This applies also to the net capital gain when IP rights are sold to a third party.

Thanks to its broad array of double-tax treaties with foreign countries, royalty fees paid to Luxembourg are often subject to no withholding tax and, if any, at a lower, preferential rate. This further advantage limits the total cost of creating and maintaining an IP revenue flow to Luxembourg.

In line with international agreements, the Luxembourg tax authorities require a local presence, ie, local management of IP rights. Office Freylinger has developed specific services to support companies in managing their IP rights, including contract drafting, the management of IP rights transfers to Luxembourg, the protection and management of new and existing rights in line with the tax authorities’ requirements and online access to portfolios.

Practical advantages

As the free movement of goods and services leads to an easy transfer of them into other EU countries, we observe that conflicts are generally not limited to one country, but stretch across borders to other EU countries. The ability to attack or defend a case in several jurisdictions is a key aspect when considering launching a new product or service, or when involved in this type of dispute.

Luxembourg, with its multicultural approach and its strategic location at the heart of Europe, is the place to manage not only IP rights, but also IP rights conflicts.

The cross-border benefits are numerous:

•  Faced with parallel IP applications in several countries, coordinating opposition filings and responses is often a great advantage.

•  Cancellation actions against various national rights can be coordinated in order to reach the desired goal, such as, for example, by blocking an adversary or challenging its rights.

•  Counterattacks can be initiated in countries not part of an initial conflict: adversaries are often not so strongly protected in all the countries involved, and therefore a cross-border approach may lead to the detection of other European countries where the adversary might have rights at risk.

•  Searches can be conducted on a broad geographic front to ensure that all aspects and rights of the adversary have been taken into account, assessed and, if necessary, challenged.

•  Local peculiarities, including the formal and case law-based particularities of each country, have to be considered in order to choose the country in which to attack or defend or attract a conflict in such a country or jurisdiction of choice. This initial assessment may determine the future of a case, and may influence the final result.

•  Using local, national languages often leads to quicker and easier conflict resolution.

The interdisciplinary and multilingual competence of Office Freylinger’s team allows the firm to draft oppositions and cancellation actions, and also settlement agreements or licensing agreements, in various languages and for various jurisdictions, thereby controlling quality and saving costs.

Office Freylinger’s personalised and tailor-made services allow for a swift and efficient follow-up of conflicts and, as far as possible, business, practical and out-of-court solutions.

Office Freylinger is your partner and single entry point for oppositions, cancellation actions and conflicts, designed to give and maintain a global overview of the European situation, both at the Community level and at regional and national levels.

Pierre Kihn is chief executive at Office Freylinger. He can be contacted at: pierre.kihn@freylinger.com