The new European Design reform: Key changes and strategic insights for rights holders

Written by Antony09/04/2025

The reform of the European design law, introduced through Regulation (EU) 2024/2822 and Directive (EU) 2024/2823, marks a significant evolution in industrial design protection. With implementation beginning on May 1, 2025, and full transposition required by December 9, 2027, the reform redefines core aspects of how designs are protected, enforced, and managed across the EU.

This article provides a comprehensive breakdown of the key provisions and their practical implications for rights holders, businesses, and legal practitioners.

Summary of the reform and its strategic impact

The new EU legal framework introduces:

Modernized definitions reflecting digital and animated designs
Expanded procedural flexibility (multi-design filings, deferment)
Enhanced enforcement tools for both physical and digital infringements
Harmonized grounds for refusal and invalidity
Rebalanced fees that benefit SMEs but impact long-cycle industries
Clear ownership rules aligned with employment law
Legal clarity on unregistered designs and repair clause use

Rights holders are advised to audit their design portfolios, revise employment agreements, and reconsider filing strategies to optimize protection under the new regime.

Key dates and implementation timeline

May 1, 2025: Regulation takes effect (Phase I)
July 1, 2026: Secondary legislation provisions apply (Phase II)
December 9, 2027: Deadline for Directive transposition
December 9, 2032: Expiration of grace period for spare parts protections

Expanded scope of protectable designs

A – Digital and non-physical designs

The scope now includes graphical user interfaces, virtual objects, and spatial configurations in virtual environments. This reform reflects market trends in gaming, metaverse technologies, and digital user experiences.

B – Animated and virtual elements

Designs incorporating movement or transitions are now explicitly protected, such as app animations, dynamic web content, or virtual clothing.

Procedural innovations in design filing

A – Simplified multi-design applications

Applicants may include up to 50 designs in a single application, with no requirement to group them under the same Locarno class.

B – Visual representation and application requirements

Only visibly represented features in the application will be protected, resolving a longstanding ambiguity. Mandatory elements include applicant identity, visual representation, and indication of product use.

C – Harmonized deferment of publication

Applicants may defer publication for up to 30 months. A request to block publication must be submitted at least 3 months before deferment expiry.

Strengthened rights and enforcement mechanisms

A – 3D printing and digital file protections

Rights holders can now block unauthorized sharing or use of digital files enabling 3D reproduction, offering critical protection in an era of decentralized manufacturing.

B – Enforcement against infringement in transit

Design rights may be enforced even if the infringing goods are merely transiting through the EU, aligning with trademark law.

C – Fast-Track invalidity procedures

The EUIPO can now expedite invalidity procedures when uncontested, reducing enforcement delays.

Ownership clarifications and employment relationships

Ownership of a design belongs by default to the creator or successor, unless created during employment, in which case the employer becomes the owner. National laws and contracts may override this default rule.

Financial impact and new fee structure

The reform introduces a comprehensive revision of the fee structure applicable to designs within the European Union. While certain upfront costs have been reduced (notably, the filing fee for a single design has decreased from €350 to €250) renewal fees rise significantly from the third renewal period onwards.

This shift is designed to benefit SMEs and short product life-cycle industries (such as fashion, accessories, and digital goods) by easing entry costs and streamlining the registration process. Conversely, it may place a heavier financial burden on sectors with long product life cycles, including automotive, home appliances, and industrial engineering, where sustained protection over 20 to 25 years is critical. For these industries, the escalating renewal costs necessitate proactive budgeting and strategic portfolio management.

Harmonized grounds for refusal and invalidity

New optional grounds for refusal include designs that:

Misuse emblems or signs of public interest
Reproduce elements of national cultural heritage (e.g., monuments, traditional clothing)

Unregistered designs: a clarified regime

First disclosure outside the EU may still qualify for unregistered protection if it reasonably reaches the relevant EU public. This flexibility aligns the law with modern digital dissemination practices.

The new repair clause and its market implications

Effective December 9, 2027, the repair clause allows reproduction of design elements necessary to restore the original appearance of complex products (e.g., car parts).

Strict conditions apply: Must be used for repair only, and origin must be disclosed.
Does not apply to trademarks or parts not critical to visual restoration.

This clause fosters competition and circular economy goals, but raises compliance questions.

Enhanced legal certainty and creative freedom

Legitimate uses of protected designs now include:

Comparative advertising
Commentary and critique
Parody

These are permitted under fair trade principles and aim to preserve freedom of expression and market transparency.

Strategic considerations for international businesses

Businesses should:

Audit portfolios and renewals deadlines to identify models that require renewal or consolidation, taking into account the new fee structure, which imposes a heavier financial burden in the long term.
Update employment contracts regarding ownership, particularly for employees likely to create designs as part of their duties. The reform confirms that, by default, rights belong to the creator unless a contrary clause or specific national provision applies. A clear contractual clause prevents future disputes over ownership and strengthens the company’s legal security in case of litigation or rights transfers.
Always assess on a case-by-case basis whether it is more advantageous to opt for an international application under the Hague System or a Community design application, depending on the target countries, exploitation prospects, and budgetary constraints.

Conclusion

The reform modernizes EU design law for the digital age, introduces procedural efficiency, and fosters innovation through clarity and flexibility. While offering opportunities, it also requires proactive adaptation by rights holders.

Dreyfus Law Firm advises rights holders across Europe and internationally to implement these changes strategically.

The Dreyfus Law Firm is in partnership with a global network of lawyers specialized in Intellectual Property.

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FAQ

1 – What rights are granted by a registered Community design in the EU?
A registered Community design (RCD) in the European Union grants its owner the exclusive right to use the appearance of a product or part of a product resulting from its visible features (such as lines, contours, shapes, textures, materials, or ornamentation). This right enables the holder to prohibit third parties from manufacturing, offering, placing on the market, importing, exporting, or using a product incorporating the protected design, or from holding such a product for these purposes. Protection extends throughout the EU and lasts for five years, renewable in five-year increments up to a total of 25 years.

2 – Can a design be transferred?
Yes. A registered design is an intangible asset that can be transferred through sale, contribution to a company, inheritance, gift, or via corporate restructuring (merger, demerger). To ensure enforceability against third parties, it is advisable to record the transfer in the register maintained by the EUIPO (or the national office for national designs). It is also possible to grant an exclusive or non-exclusive licence for the use of the design.

3 – Where should a design be filed for protection in Europe?
To obtain EU-wide protection, an application must be filed for a Registered Community Design (RCD) with the European Union Intellectual Property Office (EUIPO). This single application offers protection across all 27 EU Member States. Alternatively, the Hague International Design System administered by WIPO allows for international filings designating the EU and other jurisdictions in one procedure. National filings remain possible for country-specific needs or complementary strategies.

4 – What is the difference between a design and a model?
Under EU law, the terms “design” and “model” are used interchangeably to refer to the legal protection of a product’s appearance. However, in some national systems (e.g., French law), a practical distinction exists:

A design typically refers to a two-dimensional feature, such as a pattern or graphic interface;
A model refers to a three-dimensional shape, like a product, packaging, or industrial object.
In both cases, protection concerns the aesthetic appearance, not the technical function of the product.

Thaler v. Perlmutter: Affirmation of human authorship in copyright law

Written by Antony09/04/2025

On March 18, 2025, the U.S. Court of Appeals for the District of Columbia Circuit rendered an impactful decision in the case of Thaler v. Perlmutter, reinforcing the principle that copyright protection is exclusively reserved for works created by human authors. This ruling has significant implications for the intersection of artificial intelligence (AI) and intellectual property law.

Introduction

The rapid advancement of artificial intelligence has revolutionized various sectors, including the creative industries. However, this technological evolution has raised complex legal questions, particularly concerning the eligibility of AI-generated works for copyright protection. The recent decision in Thaler v. Perlmutter addresses these issues head-on, providing clarity on the necessity of human authorship in copyright law.

Background of the case

Dr. Stephen Thaler, a pioneer in AI research, developed an artificial intelligence system known as the “Creativity Machine.” This system autonomously produced an artwork titled “A Recent Entrance to Paradise.” In 2019, Dr. Thaler sought to register this AI-generated artwork with the United States Copyright Office, listing the Creativity Machine as the sole author and himself as the copyright claimant.

Legal proceedings and arguments

A – Initial application and denial

The Copyright Office denied Dr. Thaler’s application, citing its longstanding policy that copyright protection extends only to works created by human authors. The Office emphasized that non-human entities, such as machines, cannot be recognized as authors under the Copyright Act.

B – District Court proceedings

Challenging the Copyright Office’s decision, Dr. Thaler filed a lawsuit in the U.S. District Court for the District of Columbia. He argued that the human authorship requirement was neither mandated by the Copyright Act nor the Constitution. The district court upheld the Copyright Office’s decision, affirming that human authorship is a fundamental prerequisite for copyright eligibility.

C – Appeal to the D.C. circuit

Undeterred, Dr. Thaler appealed to the U.S. Court of Appeals for the District of Columbia Circuit. He contended that the term “author” in the Copyright Act should encompass non-human creators, especially in the context of advanced AI systems capable of independent creativity.

Court’s analysis and rationale

A – Interpretation of author in the Copyright Act

The appellate court conducted a thorough analysis of the term “author” as used in the Copyright Act of 1976. Notably, the Act does not explicitly define “author.” However, the court examined various provisions within the Act that implicitly require human authorship:

Ownership and transfer provisions: The Act presupposes that authors have the legal capacity to own property and transfer rights, capacities that machines inherently lack.
Duration of copyright: Copyright protection is tied to the life of the author, a concept inapplicable to non-human entities.
Termination rights: The Act provides for termination rights exercisable by the author’s heirs, underscoring the human-centric framework of copyright law.

Based on these considerations, the court concluded that the Copyright Act necessitates human authorship for a work to qualify for copyright protection.

B – Rejection of non-human authorship arguments

Dr. Thaler proposed that the work-for-hire doctrine allows non-human entities to be considered authors. The court rejected this argument, clarifying that the doctrine permits employers to be deemed authors of works created by human employees within the scope of their employment, but it does not extend authorship to machines or AI systems.

Implications for AI-Generated works

A – Human involvement in creative processes

The court’s decision reaffirms that copyright protection is reserved for works with identifiable human authorship. This does not preclude the use of AI in the creative process; however, there must be substantial human involvement and creative contribution for a work to be eligible for copyright protection.

B – Future considerations

As AI technology continues to evolve, the delineation between human and machine contributions may become increasingly complex. Future legal frameworks may need to adapt to address these challenges, ensuring that copyright law remains relevant in the age of artificial intelligence.

Conclusion

The Thaler v. Perlmutter decision underscores the enduring principle that human creativity is at the heart of copyright protection. While AI can serve as a valuable tool in the creative process, the law currently requires a human touch to confer copyright.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters.

Dreyfus Law Firm collaborates with a global network of IP attorneys to provide tailored legal solutions in the evolving field of AI and copyright.

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FAQ

1 – Does AI have copyright?
No. Under current legal frameworks in the United States, France, and most jurisdictions worldwide, artificial intelligence cannot hold copyright. Copyright law recognizes only natural persons (human beings) as authors. The recent ruling in Thaler v. Perlmutter (2025) reaffirmed that a work created autonomously by an AI system without human authorship is not eligible for copyright protection. Machines are regarded strictly as tools, not as legal subjects.

2 – Why does AI pose a threat to copyright law?
AI challenges the fundamental principles of copyright, particularly authorship, originality, and legal accountability. When a work is generated autonomously without substantial human input, it becomes difficult to assess whether it qualifies for protection and, if so, who owns the rights. Additionally, generative AI systems are often trained on protected datasets without authorization, raising significant risks of massive infringement, bypassing of creators, and erosion of intellectual property value. The mass production of AI-generated content also complicates the detection and protection of authentic human works.

3 – What is the impact of artificial intelligence on the law?
Artificial intelligence has a transformative effect on legal systems, presenting both challenges and opportunities:

In intellectual property law, it compels a re-evaluation of the concepts of authorship, ownership, and originality.
In contract law, it raises issues regarding the validity of agreements negotiated or executed by autonomous agents.
In liability law, it prompts questions about assigning responsibility for harm caused by AI systems.
In data protection law, it intersects with privacy regulations and the governance of algorithmic decisions.

Legal frameworks will need to evolve significantly while preserving their core principles, to provide a fair and effective regulatory response to AI-driven innovation.

The Thomson Reuters Enterprise Centre GmbH and West Publishing Corp. v. Ross Intelligence Inc. Case: Implications for AI training and copyright law

Written by Antony09/04/2025

Thomson Reuters Enterprise Centre GmbH et al v. ROSS Intelligence Inc., Docket No. 1:20-cv-00613

In the rapidly evolving landscape of artificial intelligence (AI), the intersection of AI development and intellectual property rights has become a focal point of legal discourse. The case of Thomson Reuters Enterprise Centre GmbH and West Publishing Corp. v. Ross Intelligence Inc. dated February 11, 2025 serves as a landmark in this context, addressing critical questions about the use of copyrighted materials in AI training processes.

Background of the case

Parties involved

Thomson Reuters Enterprise Centre GmbH and its subsidiary, West Publishing Corp., are prominent providers of legal research and information services, notably through their Westlaw platform. Ross Intelligence Inc., on the other hand, was an AI startup aiming to revolutionize legal research by developing an AI-powered platform to provide efficient legal information retrieval.

Nature of the dispute

The dispute arose when Thomson Reuters alleged that Ross Intelligence had unlawfully utilized content from Westlaw’s proprietary database to train its AI system. Specifically, Thomson Reuters contended that Ross had copied headnotes and other editorial enhancements from Westlaw without authorization, constituting copyright infringement. Ross Intelligence countered by asserting that their use of the materials fell under the fair use doctrine, a legal principle permitting limited use of copyrighted works without permission under certain circumstances.

Legal issues presented

Copyright infringement allegations

Thomson Reuters claimed that Ross Intelligence’s actions amounted to direct and willful copyright infringement. The crux of their argument was that the headnotes and editorial content in Westlaw are original works protected under copyright law, and Ross’s reproduction of these elements for commercial gain violated their exclusive rights.

Fair use defense

In response, Ross Intelligence invoked the fair use defense, arguing that their use of Westlaw’s content was transformative and served the public interest by fostering innovation in legal research. They posited that their AI system did not merely replicate the original content but utilized it to develop a novel tool that enhanced legal information accessibility.

Court’s analysis and decision

Evaluation of copyright claims

The court meticulously examined whether the materials in question were subject to copyright protection. It affirmed that the headnotes and editorial content produced by Thomson Reuters involved sufficient creativity and originality to warrant copyright protection, thereby recognizing them as protected works under the law.

Assessment of fair use doctrine

The court then evaluated the applicability of the fair use doctrine by analyzing the following factors:

Purpose and character of the use: The court determined that Ross’s use was commercial and not sufficiently transformative, as it replicated the original content’s purpose.
Nature of the popyrighted work: The works used were factual but included creative elements, weighing against fair use.
Amount and substantiality of the portion used: Ross had used a substantial portion of the protected content, which was central to Thomson Reuters’ offerings.
Effect on the market: The court found that Ross’s use could potentially supplant the market for Westlaw’s services, adversely affecting Thomson Reuters’ revenue.

Based on this analysis, the court concluded that Ross Intelligence’s use did not qualify as fair use and constituted copyright infringement.

Broader implications for AI and copyright

Impact on AI training practices

This ruling underscores the necessity for AI developers to exercise caution when using copyrighted materials for training purposes. It highlights that unauthorized use of protected content, even for innovative applications, may lead to legal repercussions. Developers are encouraged to seek licenses or utilize public domain data to mitigate infringement risks.

Future legal considerations

The case sets a precedent for how courts may approach similar disputes involving AI and copyrighted content. It emphasizes the importance of balancing technological advancement with the protection of intellectual property rights. Stakeholders in the AI industry should closely monitor legal developments and consider proactive measures, such as developing internal guidelines for content use and engaging in policy discussions to shape future regulations.

Conclusion

The Thomson Reuters v. Ross Intelligence case serves as a pivotal reference point in the ongoing dialogue between AI innovation and copyright law. It illustrates the complexities inherent in applying traditional intellectual property principles to modern technological contexts and signals a call to action for both legal professionals and AI developers to navigate these challenges collaboratively.

Need expert guidance on AI and intellectual property? Dreyfus Law Firm specializes in intellectual property law, including trademark, copyright, and AI-related legal matters. Our experts stay ahead of AI and copyright developments!

Dreyfus Law Firm collaborates with a global network of IP attorneys.

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FAQ

What was the main issue in the Thomson Reuters v. Ross Intelligence case?
The primary issue was whether Ross Intelligence’s use of Thomson Reuters’ copyrighted materials to train its AI system constituted fair use or copyright infringement.

What is the fair use doctrine?
Fair use is a legal principle that allows limited use of copyrighted material without permission for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

How did the court rule on the fair use defense in this case?
The court ruled against Ross Intelligence, determining that their use of the copyrighted materials did not meet the criteria for fair use and thus constituted infringement.

What are the implications of this ruling for AI developers?
AI developers must be cautious when using copyrighted content for training purposes and should consider obtaining licenses or using public domain data to avoid legal issues.

Does this case affect all AI applications using copyrighted materials?
While this case sets a significant precedent, each situation may differ based on specific facts. It’s advisable for AI developers to consult legal experts when dealing with copyrighted materials.

Can AI systems use any copyrighted material under fair use?
Not necessarily. The applicability of fair use depends on factors such

Latest developments in generative AI and copyright: An in-depth analysis

Written by Antony09/04/2025

The rapid evolution of generative artificial intelligence (AI) has transformed the creation and use of content, raising complex questions regarding copyright. This article provides a comprehensive overview of recent legal actions and legislative initiatives related to generative AI and copyright, highlighting the challenges and opportunities that emerge in this dynamic landscape.

Recent legal actions in the United States

In the United States, several lawsuits have been initiated concerning the use of copyrighted works in training generative AI models.

Case of Kadrey v. Meta

In this class action lawsuit, authors Richard Kadrey, Sarah Silverman, and Christopher Golden allege that Meta Platforms Inc. infringed their copyrights by using their books to train its AI model, LLaMA (Large Language Model Meta AI). On November 20, 2023, the U.S. District Court for the Northern District of California dismissed several claims, including those for direct copyright infringement based on the derivative work theory and vicarious copyright infringement. However, the court allowed the plaintiffs’ claims related to the removal of copyright management information under the Digital Millennium Copyright Act (DMCA) to proceed, acknowledging that the plaintiffs had alleged sufficient injury for Article III standing. Subsequently, on March 10, 2025, the plaintiffs filed a motion for partial summary judgment on direct copyright infringement, arguing that Meta cannot rely on a fair use defense concerning its alleged acquisition of “millions of pirated works” used to train its model.

Legal proceedings against OpenAI and Microsoft

In December 2023, The New York Times filed a lawsuit against OpenAI and Microsoft, alleging that their AI models were trained using the newspaper’s articles without authorization, constituting copyright infringement. This case underscores the growing tensions between content creators and AI developers regarding the use of protected works in AI training. As of March 2025, a federal judge has allowed the lawsuit to proceed, dismissing some claims but permitting the core allegations of copyright infringement to move forward.

International legal developments

Legal actions related to generative AI and copyright are also increasing internationally.

Legal action in France against Meta

In France, three associations representing authors and publishers—the Syndicat National de l’Édition (SNE), the Société des Gens de Lettres (SGDL), and the Syndicat National des Auteurs et des Compositeurs (SNAC)—have initiated proceedings against Meta. They allege that Meta used copyrighted works without authorization to train its generative AI model. This is the first action of its kind in France, demanding copyright enforcement and the complete removal of data repositories used for AI training.

Legislative and regulatory initiatives

In response to these challenges, several legislative and regulatory initiatives have been proposed or implemented.

United States: Generative AI Copyright Disclosure Act

In April 2024, U.S. Representative Adam Schiff introduced the Generative AI Copyright Disclosure Act. This bill requires companies to disclose the copyrighted works used to train their generative AI systems by submitting a notice to the Register of Copyrights at least 30 days before the public release of a new or updated AI model. Penalties for non-compliance start at $5,000, with no maximum penalty specified.

European Union: AI Act

In the European Union, the proposed Artificial Intelligence Act (AI Act), which was formally adopted on 13 March 2024, includes specific provisions designed to address intellectual property concerns related to generative AI.

Among its key requirements, the AI Act mandates that developers of general-purpose AI models, including generative AI systems, must provide detailed documentation on the content used for training, including information on whether the datasets contain copyright-protected material. This transparency obligation is aimed at ensuring that rights holders are aware of how their works may have been used.

Additionally, the Act introduces a duty to clearly label AI-generated content, enabling consumers and rightsholders to identify content created without direct human authorship.

These measures reflect the EU’s broader objective to strike a balance between fostering AI innovation and safeguarding intellectual property rights, especially as tensions grow between creators and developers of large-scale AI systems.

Conclusion

The intersection of generative AI and copyright law is a rapidly evolving field, marked by significant legal actions and legislative efforts worldwide. As AI technology continues to advance, it is imperative for stakeholders—including developers, content creators, and legal professionals—to stay informed and engaged with these developments to navigate the complex landscape effectively.

FAQs

What is generative AI?
Generative AI refers to artificial intelligence systems capable of creating content, such as text, images, or music, based on patterns learned from existing data.

Why is generative AI raising copyright concerns?
Generative AI models are often trained on large datasets that include copyrighted works, leading to concerns about unauthorized use and potential infringement.

What is the Generative AI Copyright Disclosure Act?
It is a proposed U.S. legislation requiring companies to disclose the copyrighted materials used to train their generative AI systems, aiming to increase transparency and protect creators’ rights.

How is the European Union addressing AI and copyright issues?
The EU’s proposed Artificial Intelligence Act includes provisions for transparency in the use of copyrighted materials for AI training and mandates labeling of AI-generated content.

What should companies developing generative AI models consider regarding copyright?
Companies should ensure they have the necessary rights or licenses for the data used in training their models and stay informed about evolving legal and regulatory requirements to mitigate infringement risks.

At Dreyfus Law Firm, we specialize in intellectual property law and are committed to assisting clients in navigating the complex intersection of AI and copyright. Our firm collaborates with a global network of attorneys specializing in intellectual property to provide comprehensive support.

Dreyfus Law Firm is in partnership with a global network of Intellectual Property attorneys, ensuring comprehensive assistance for businesses worldwide.

Featured in the Press: Dreyfus in the Spotlight in the Expert Guide 2025

Written by Antony17/02/2025

When an intellectual property (IP) firm is mentioned and approached by specialized media outlets, it speaks not only to its credibility but also to its ability to innovate and offer concrete solutions to today’s legal challenges. That is precisely the case with Dreyfus, whose expertise in design law—as well as broader IP protection—was recently highlighted in the Expert Guide 2025 – Intellectual Property, published by Corporate LiveWire.

In this article, we take a closer look at that publication, outlining the key points covered in the interview with Nathalie Dreyfus, the firm’s founder, and showing how this recognition by the specialized press reinforces Dreyfus’s status as a leading authority in Europe on the modernization of design law. We also discuss the main issues raised in the Expert Guide 2025 article and explain how the firm puts this knowledge into practice to support its clients.

Dreyfus in the Spotlight in the Expert Guide 2025

The Expert Guide 2025 – Intellectual Property Publication

Expert Guide 2025, dedicated to intellectual property, is published by Corporate LiveWire, an international media outlet that regularly provides in-depth analyses and resources on legal and economic trends. In this edition, various renowned experts and specialized firms address critical topics such as:

The Unified Patent Court (UPC) regime.
Changes to trademark protection rules in certain African countries.
Developments in copyright law for utilitarian objects.
New digital regulations affecting trade secret protection and the rise of 3D printing.

In this context, a special focus is placed on the modernization of design law in Europe, a topic at the heart of current debates and set to gain new momentum with the phased implementation of revised legislative provisions starting in 2025.

The Article “The Modernisation of EU Design Protection: A New Era for European Creativity”

Written by Nathalie Dreyfus, founder of Dreyfus, this article—featured in Expert Guide 2025—explains the key aspects of the European reform on designs, including:

The shift from “Community Designs” to “European Union Designs” (EUD), symbolized by the adoption of the Ⓓ icon to align branding with ® for trademarks and © for copyright.
An expanded definition of “designs” and “products” to include virtual or animated objects, as well as user interface elements.
A more flexible application process, allowing up to 50 designs to be grouped in a single filing, regardless of their classification under the Locarno Classification.
Strengthened rights for owners, now clearly covering 3D reproductions and the unauthorized use of digital files intended for additive manufacturing.

Thanks to this article, which you can find on Corporate LiveWire’s website, readers can appreciate the full scope of the reform and the opportunities it creates, while also understanding the associated risks and challenges.

The Expertise of Dreyfus, an IP Specialist, Recognized by the Specialized Press

A Track Record Built in the Field

From its inception, Dreyfus has stood out thanks to a multidisciplinary approach that combines legal, technical, and strategic capabilities. This versatility allows the firm to:

Anticipate market and legislative changes, especially in rapidly evolving areas (digital, AI, 3D printing).
Advise a wide range of clients—major corporations, SMEs, startups, and independent creators—on building and defending their portfolios of designs, trademarks, and patents.
Play an active role in European discussions through conferences, in-depth articles, and broader initiatives (experience-sharing, public consultations).

Moreover, Nathalie Dreyfus’s direct involvement in leading publications demonstrates the firm’s high-level recognition. Being invited to publish an analysis in a resource such as Expert Guide 2025 not only affirms Dreyfus’s professional legitimacy but also highlights concrete and pragmatic solutions to the challenges of design law.

Concrete Commitments in Response to the Modernization of Design Law

In her article, Nathalie Dreyfus highlights several crucial points on which the firm already assists its clients:

Adapting to the Ⓓ Symbol: educating companies about the importance of clearly indicating the protection of their creations and advising them on strategies for using the symbol (logo, packaging, marketing).
Managing a Design’s Life Cycle: from the conceptual stage to market launch, including potential renewals and defense against counterfeiting.
Addressing New Digital Formats: supporting the development of technical documentation that includes 3D renderings, animations, or screenshots.

These areas of expertise illustrate Dreyfus’s proactive approach and its capacity to provide businesses with ways to capitalize on their creations.

Challenges Raised by the Reform and Practical Solutions

Why Is This Reform Crucial?

Uniformity: One of the main objectives of the reform is to further harmonize rules across the European Union, taking into account national specificities and the need to adapt to the digital era.
New Forms of Piracy: 3D printing, sharing of STL files, and the rise of the metaverse require rethinking the rights granted to designers and businesses.
Strengthening Competitiveness: Better protection boosts investment in design and encourages creativity, two crucial levers for international competitiveness.

The Contributions of Dreyfus, an IP Expert

To address these developments:

Portfolio Audits: the firm offers a full audit of existing designs to identify gaps, filing opportunities, or renewal strategies best suited to new fee structures and updated protection durations.
Litigation Support: if counterfeiting is detected, Dreyfus has extensive experience in proceedings before the EUIPO, French courts, and other European jurisdictions.
Training and Awareness: Nathalie Dreyfus and her team regularly conduct webinars and seminars to demystify legislative developments and enhance the in-house expertise of their clients’ teams.

External Links and Additional Resources

To help you delve deeper into the issues discussed in this article, here are some useful links:

Expert Guide 2025 – Intellectual Property (Corporate LiveWire): you’ll find the full article entitled “The Modernisation of EU Design Protection: A New Era for European Creativity” by Nathalie Dreyfus.
EUIPO – European Union Intellectual Property Office: the EU’s official body for registering trademarks and designs, and the key organization behind the reform.

These resources allow you to gain a clearer understanding of the challenges and opportunities arising from the new European design legislation, as well as to consider potential strategies available to companies and creators.

Conclusion: Dreyfus, a Trusted Partner for the New Era of European Design

Specialized press, through the Expert Guide 2025 published by Corporate LiveWire, emphasizes the relevance of Dreyfus’s work in the intellectual property sphere. The modernization of design law in Europe—and the heightened focus on digital creations—marks a major turning point for both businesses and creators.

By being recognized and cited as an expert, Dreyfus solidifies its position as a leader in providing strategic, legal, and technical support to major corporations, SMEs, and individuals seeking to secure and capitalize on their intangible assets. The firm is at your disposal for further information, personalized case studies, or custom support.

Need Support Protecting Your Designs?

Contact Dreyfus:

Phone: +33 1 56 59 11 00
E-mail: contact@dreyfus.fr
Website: www.dreyfus.fr

Benefit from the expertise of Nathalie Dreyfus and her team to anticipate the effects of the reform and implement the best practices to safeguard your creativity and maintain your competitiveness in the European market.

Understanding the European Union trademark (EUTM)

Written by Antony03/02/2025

Navigating the world of trademarks can be complex, especially when it comes to the European Union Trade Mark (EUTM).
This system offers a unique opportunity: it allows businesses to protect their brand across all EU member states with a single application.

But what does the process involve? How does it differ from national trademarks?
This article provides a comprehensive guide to the EUTM, covering the application process, benefits, and legal considerations.

Whether you’re a business owner, a legal professional, or just curious, keep reading. Let’s explore the world of the European Union Trade Mark.

What is the European Union Trade Mark (EUTM)?

The European Union Trade Mark (EUTM) is a crucial asset for businesses. It is a unified trademark system that grants protection across all EU member states with just one application.

Managed by the European Union Intellectual Property Office (EUIPO), the EUTM offers a cost-effective and streamlined registration process. This is particularly beneficial for businesses looking to expand their market reach across Europe.

A key feature of the EUTM is its uniformity:

One trademark = protection in all EU countries
The same rights and legal standing apply in every member state

Who can register an EUTM?

To qualify, a trademark must be distinctive—it must clearly distinguish goods or services from those of competitors.

Generic or purely descriptive names cannot be registered
The trademark can be a word, logo, shape, color, sound, or even a combination of these elements

In short, the EUTM is a powerful tool for businesses seeking to protect their brand across the European Union.

Benefits of Registering a European Union Trade Mark (EUTM)

Registering an EUTM comes with significant advantages, especially for businesses operating across multiple EU countries.

Key benefits:

Single registration = protection in all EU member states
Cost-effective: One application is cheaper than multiple national filings
Simplified administration: Manage your trademark centrally via EUIPO
Stronger brand protection: Enforce rights across all EU countries
10-year protection, renewable indefinitely

Industry-specific advantages:

Fashion & luxury goods: Protects against counterfeit sales across the EU
Tech & software: Secures brand identity in a rapidly evolving market
Agriculture & regional products: Helps protect geographical indications (GI) and designations of origin

By securing an EUTM, businesses strengthen their brand presence in one of the world’s largest markets.

How to Apply for an EUTM

The European Union Intellectual Property Office (EUIPO) handles all EUTM applications.

Step-by-step application process:

Conduct a trademark search
- Use TMview to check for existing trademarks and avoid conflicts
Prepare your application
- Choose your trademark type (word, logo, etc.)
- List goods & services using the Nice Classification system
File your application online via EUIPO
- The basic fee is €850 for one class of goods/services
- Additional fees apply for extra classes (€50 for the second, €150 for each extra class)
EUIPO examination
- EUIPO checks if your trademark meets legal requirements (e.g., distinctiveness)
Publication & opposition period
- Your trademark is published in the EU Trade Marks Bulletin
- Third parties have three months to file oppositions
Final registration
- If no opposition is filed, or if opposition is rejected, your trademark is officially registered
- You receive a registration certificate valid for 10 years

A well-prepared application reduces delays and increases approval chances.

EUTM vs. National Trademarks vs. Madrid System

Feature	EUTM	National Trademark	Madrid System
Coverage	All EU countries (27)	One country only	Multiple countries (incl. non-EU)
Cost-effectiveness	One fee for the entire EU	Separate fees per country	Covers global markets
Enforcement	Unified rights across EU	Must enforce in each country separately	Protection varies by country
Best for…	Businesses targeting the entire EU	Local businesses	Companies expanding worldwide

Which one to choose?

If your focus is the EU market, an EUTM is the best option
If you only operate in one or two countries, a national trademark might be more practical
For international protection, consider using the Madrid System to cover multiple regions

After Registration: Rights & Responsibilities

Once your EUTM is registered, you gain exclusive rights across all EU member states.

Your rights:

Use the ® symbol to signal trademark protection
Take legal action against infringers anywhere in the EU
License or sell your trademark

Your responsibilities:

Use it or lose it: If your trademark isn’t used for five consecutive years, it can be revoked
Monitor for infringements: Regularly check online & offline markets for unauthorized use
Renew every 10 years to maintain protection

Consider using trademark monitoring services to detect infringement early.

The Impact of Brexit on EUTM

Since Brexit (January 1, 2021), EUTMs no longer cover the UK.

Key Brexit changes:

EUTMs remain valid in the EU (27 countries)
Existing EUTMs were automatically converted into UK trademarks
New UK trademarks must now be filed separately

If you operate in both the EU and UK, you must manage your trademarks separately.

Common Mistakes & How to Avoid Them

Mistake: Not conducting a trademark search
Solution: Use TMview to check for conflicts before applying
Mistake: Choosing a generic name
Solution: Pick a distinctive and non-descriptive brand name
Mistake: Submitting an incomplete application
Solution: Double-check that all details and classifications are correct
Mistake: Not renewing on time
Solution: Set reminders for the 10-year renewal deadline

Conclusion: Why a Strategic Approach Matters

Registering an EUTM is a valuable investment for businesses expanding across Europe.

It provides strong legal protection
It helps build a unified brand identity
It simplifies trademark management across 27 countries

By carefully planning your application, avoiding common pitfalls, and actively protecting your trademark, you can ensure long-term brand success in the European market.

Ready to register your EUTM? Start your application today at EUIPO.

Would you like any additional refinements or industry-specific details?

FAQ: European Union Trade Mark (EUTM)

What is the EUTM, and how does it differ from national trademarks?
The EUTM is a single trademark registration valid across all EU member states. Unlike national trademarks, it offers uniform protection in 27 countries through one application.

How much does it cost to register an EUTM?
The basic fee is €850 for one class of goods or services. Additional classes cost €50 for the second class and €150 for each subsequent class.

Can I modify my EUTM after registration?
Yes, but modifications are limited to minor changes that do not alter the trademark’s identity. Adding new goods or services requires a new application.

What happens during the opposition period?
The opposition period lasts three months after publication. Third parties can challenge the trademark based on prior rights, requiring the applicant to provide evidence to defend their case.

How long does the EUTM registration process take?
Typically, it takes 4–6 months, provided there are no oppositions or complications.

What rights does the ® symbol grant?
The ® symbol indicates that your trademark is officially registered. It serves as a deterrent to infringers and enhances your brand’s credibility.

Can an EUTM be revoked?
Yes, an EUTM can be revoked for non-use over five consecutive years or if it becomes generic or misleading.

How does Brexit affect my EUTM?
Since Brexit (January 1, 2021), EUTMs no longer cover the UK. Existing EUTMs were automatically converted into comparable UK trademarks.

What should I do if my trademark application is rejected?
You can file an appeal or amend your application to address the reasons for rejection. Consider legal counsel for complex cases.

How do I enforce my EUTM rights?
You can take legal action against infringers in any EU member state. Monitoring tools and legal support help detect and address violations effectively.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for strategic advice on EUTM registration, enforcement, and cancellation actions before the EUIPO. Secure your brand’s future now!

How to win a cancellation action against a European trademark ?

Written by Antony31/01/2025

How to win a cancellation action before the EUIPO?

Protecting trademarks effectively within the European Union requires a deep understanding of the legal mechanisms available to challenge the validity or use of a registered trademark. The invalidity and revocation procedures, collectively referred to as “cancellation proceedings,” before the European Union Intellectual Property Office (EUIPO) provide rights holders and third parties with tools to maintain the integrity of the trademark register.

In 2024, approximately 2,000 cases have been consistently initiated each year since 2021, showing a stable trend with a slight decrease. Meanwhile, revocation proceedings have remained stable at approximately 500 per year since 2021, with a slight upward trend observed.

Introduction to Invalidity and Revocation Procedures

The invalidity and revocation procedures aim to challenge the validity or continued use of a registered European Union trademark (EUTM). Invalidity disputes the trademark’s validity at the time of registration, while revocation addresses the loss of the trademark owner’s rights due to post-registration circumstances.

Invalidity Procedure

A trademark can be declared invalid based on absolute or relative grounds.

Absolute Grounds for Invalidity

A trademark may be invalidated if, at the time of registration, it:

Lacked distinctiveness.
Was descriptive of the goods or services in question.
Contravened public order or morality.
Was liable to mislead the public regarding the nature, quality, or geographical origin of the goods or services.

Relative Grounds for Invalidity

A trademark may also be invalidated if it infringes upon prior rights, such as:

An earlier identical or similar trademark for identical or similar goods or services, creating a likelihood of confusion.
Copyright, design, trade name, or company name rights.

Revocation Procedure

Revocation addresses the improper use or non-use of a trademark following its registration.

Non-use of the Trademark

The owner may lose their rights if the trademark has not been put to genuine use in the European Union for an uninterrupted period of five years without valid reasons.

Becoming a Generic Term

If, due to the owner’s actions or inaction, the trademark has become a generic term in the trade for the goods or services it covers, it may be revoked.

Misleading Character of the Trademark

A trademark may also be revoked if its use by the owner or with their consent has become misleading regarding the nature, quality, or geographical origin of the goods or services.

Procedure Before the EUIPO

Application Filing by Your Representative

To ensure a smooth and effective application process before the EUIPO, it is essential to engage a qualified counsel who can provide strategic advice and represent your interests effectively. While it is not mandatory to appoint a representative to file a cancellation action, parties without a domicile, principal place of business, or an effective and genuine industrial or commercial establishment within the European Economic Area (EEA) must be represented by an authorized representative in EUIPO proceedings. Even for those with a presence in the EEA, appointing a representative ensures the process is handled with the expertise required to maximize efficiency and effectiveness.

Adversarial Phase

Once the application is received, the EUIPO verifies its admissibility. If deemed admissible, an adversarial phase begins, allowing the parties to present arguments and evidence. The EUIPO may also request additional information or clarification from the parties.

Decision and Effects

Following the review of arguments and evidence, the EUIPO issues a decision. If the application is successful, the trademark is either invalidated retroactively or revoked from the date of the decision. These decisions can significantly impact the trademark landscape within the EU.

Appeal Process

Decisions by the EUIPO can be challenged through a well-defined appeal process:

Appeal to an EUIPO Board of Appeal: This must be filed within two months from the date of notification of the decision. A written statement detailing the grounds of appeal is required.
Appeal to the General Court of the European Union: If dissatisfied with the Board of Appeal’s decision, an appeal can be lodged within two months from the notification of that decision. This process examines the legality of the decision but does not re-assess the facts.
Referral to the Court of Justice of the European Union (CJEU): A further appeal on points of law can be made within two months of the General Court’s decision. The CJEU reviews legal errors but does not revisit the case’s substance.

Recent Trends and Emerging Practices

Use of Artificial Intelligence in Trademark Searches

With the increasing reliance on AI tools, many businesses now utilize AI-driven platforms for pre-registration trademark searches. These tools enhance precision and speed in identifying potential conflicts, reducing the likelihood of disputes.

Impact of Blockchain on Trademark Authenticity

Blockchain technology offers a secure and transparent method for proving trademark use. By maintaining immutable records, it ensures authenticity and provides robust evidence in revocation proceedings.

Practical Tips for Success in Cancellation Actions

Conduct Comprehensive Pre-Filing Research: Ensure thorough investigation of potential conflicts or grounds for cancellation using tools like TMview.
Maintain Robust Documentation: Keep detailed records of trademark usage to counter non-use allegations.
Engage Expert Counsel Early: Involve experienced legal professionals to navigate the complexities of EUIPO procedures.
Leverage Evidence Effectively: Present compelling evidence, such as market surveys or sales data, to support your claims or defense.

Strategic Approaches to Cancellation Actions

Proactive Risk Assessment

Before initiating a cancellation action, it is critical to conduct a comprehensive risk assessment. This involves analyzing the targeted trademark’s weaknesses, such as lack of distinctiveness or non-use, and identifying supporting evidence to strengthen your case. Using tools like TMclass and DesignView can streamline this process and ensure a strategic approach.

Collaborating with Regional Experts

Trademark laws and practices can vary subtly between EU member states. Collaborating with local IP experts who understand jurisdictional nuances ensures your cancellation strategy aligns with both EUIPO standards and local regulations.

Tailoring Arguments for Absolute and Relative Grounds

When challenging a trademark based on absolute grounds, highlight legal principles such as descriptiveness or violation of public order. For relative grounds, focus on substantiating prior rights through market research, survey evidence, and sales data.

Case Studies: Lessons from Recent Decisions

Case Study 1: Revocation for Non-Use

In 2023, a tech company successfully revoked a competitor’s trademark on the grounds of non-use. The claimant demonstrated that the trademark owner had not used the mark in commerce for over five years. This case underscores the importance of maintaining detailed records of trademark use.

Case Study 2: Genericization of a Trademark

A recent case involved a prominent food brand losing its trademark due to genericization. The opposing party presented consumer surveys and industry reports showing that the mark had become synonymous with the product category, no longer serving as a source identifier.

Emerging Trends in Trademark Cancellation

AI-Driven Case Analysis

Artificial intelligence tools are being adopted by law firms and businesses to analyze previous EUIPO decisions. These tools can predict potential outcomes and identify the most persuasive arguments, streamlining the preparation process for cancellation proceedings.

Globalization of Trademark Disputes

With the rise of global commerce, trademark disputes increasingly involve cross-border issues. EUIPO decisions are often referenced in cases involving parallel trademarks filed in other jurisdictions, emphasizing the need for a unified global strategy.

Sustainability as a Grounds for Contestation

As sustainability becomes a consumer priority, trademarks misleadingly suggesting eco-friendliness are increasingly being challenged. Leveraging environmental claims can form a compelling basis for cancellation under absolute grounds.

Practical Insights: Preparing Evidence for Success

Collect Robust Documentation

Evidence is crucial in trademark cancellation cases. Compile a comprehensive portfolio that includes:

Historical usage records (e.g., invoices, advertising campaigns).
Market surveys demonstrating consumer confusion or genericization.
Third-party testimonials or affidavits supporting your claims.

Engage Technical Experts

For cases involving complex goods or services, expert opinions can provide critical insights. For example, a technical expert can validate claims about the functionality of a product, supporting arguments for invalidity based on lack of distinctiveness.

Monitor Competitors Proactively

Use trademark monitoring tools to track potential infringements or misuse by competitors. This allows you to initiate cancellation proceedings promptly, protecting your brand equity.

Strengthening the Legal Framework: Recommendations for Businesses

Policy Alignment with Sustainability Goals

Aligning trademark strategies with broader corporate sustainability goals can strengthen the defensibility of trademarks. For example, ensuring that trademarks promoting eco-friendly products are substantiated with solid evidence mitigates the risk of misleading claims.

Adapting to Regulatory Changes

With the EU’s continuous evolution of IP laws, businesses must stay updated on new directives and regulations. Engaging with IP attorneys who monitor these changes can ensure that strategies remain compliant and forward-looking.

Strengthening Evidence Practices

Regularly collect and update documentation related to the use of trademarks, including marketing materials, sales records, and consumer studies. Proactively preparing this data not only strengthens your defense against cancellation actions but also positions you better for asserting your rights in cross-border disputes.

Our Expertise

Handling invalidity and revocation proceedings before the EUIPO demands expertise, precision, and a results-oriented approach. At Dreyfus Law Firm, we specialize in intellectual property law, offering extensive experience in managing cancellation actions and defending trademarks.

Why Choose Dreyfus Law Firm?

Proven Expertise: Our attorneys possess deep knowledge of EUIPO procedures and case law, ensuring robust representation for clients.
Tailored Strategies: We analyze each case individually, crafting solutions that align with our clients’ business objectives and maximize their chances of success.
Cross-Border Capabilities: Our team seamlessly manages cases that span multiple jurisdictions, ensuring a cohesive strategy for global trademark protection.

Comprehensive Services

Pre-Filing Analysis: Conducting in-depth assessments of trademarks for invalidity or revocation risks.
Preparation and Filing: Drafting detailed and persuasive cancellation applications supported by strong evidence.
Effective Advocacy: Representing clients during adversarial proceedings and appeals before the EUIPO and EU courts.

Client Success Stories

Revocation for Non-Use: Successfully revoked a dormant competitor’s trademark, allowing our client to expand its brand presence in the EU market.
Invalidity on Absolute Grounds: Achieved invalidity of a trademark for being descriptive, ensuring our client’s unique branding was safeguarded against dilution.
Defending Against Cancellation: Protected a client’s established trademark by demonstrating genuine use through robust documentation and market evidence.

Commitment to Results

At Dreyfus Law Firm, we are dedicated to providing practical solutions and achieving results that protect our clients’ business interests. Whether filing a cancellation action or defending against one, we deliver unparalleled legal expertise and strategic insight.

Frequently Asked Questions (FAQ)

What is the difference between cancellation and opposition actions?
Opposition actions occur before a trademark is registered and aim to block the application. Cancellation actions, on the other hand, target trademarks that are already registered.
How long does the cancellation process take at the INPI?
The average timeline for cancellation actions at the INPI is 6 to 12 months, depending on the complexity of the case and the volume of evidence submitted.
Can I initiate a cancellation action if I am outside France?
Yes. Non-French entities can initiate cancellation actions, but they must appoint a local representative or authorized attorney to act before the INPI.
What are the costs associated with a cancellation action?
The INPI charges a fixed administrative fee of €600 for filing a cancellation action. Additional legal fees depend on the complexity of the case and the attorney’s expertise.
Can a cancellation action be appealed?
Yes. Decisions made by the INPI can be appealed to the Court of Appeal of Paris within one month of notification. Further appeals can be made to the Court of Cassation.
What evidence is required for revocation due to non-use?
To support a revocation action based on non-use, you must demonstrate:

The absence of sales or marketing activities related to the trademark.
Lack of trademark visibility in commercial contexts.

How do cancellation actions impact brand reputation?
While cancellation actions can protect your business, they may also generate publicity. Managing public relations alongside legal strategy is essential.

How do I prove non-use of a trademark?
To prove non-use, collect evidence such as market analyses, online presence checks, and absence of sales records during the relevant period.

Can I initiate cancellation proceedings outside the EU?
Yes, parallel actions can be initiated in jurisdictions where the trademark is also registered, provided local laws allow for cancellation based on similar grounds.

What is the success rate for cancellation proceedings at the EUIPO?
Recent EUIPO data suggests that approximately 40% of invalidity and revocation applications are successful, emphasizing the importance of presenting strong evidence.

Protect your trademarks and business reputation with expert legal guidance. Contact Dreyfus Law Firm today for tailored advice on cancellation actions before the EUIPO. Let us help safeguard your intellectual property rights!