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Likelihood of confusion and trademark distinctiveness : Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO

Written by Dreyfus09/09/2024

Two recent trademark dispute decisions, Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO, provide valuable insights into how the European Union Intellectual Property Office (EUIPO) and the European General Court (EGC) assess similarity, distinctiveness, and the likelihood of confusion between trademarks. These cases highlight the complexities involved in trademark disputes and illustrate the fine lines that can determine the outcome of such cases.

Bar Paris v Paris Bar (T-117/23)

v

Background

On June 28, 2019, Superstudio 21 GmbH filed an application for the European Union trademark registration of the sign for foodstuffs and restaurant services. Kantstraße Paris Bar GmbH opposed the registraton based on its earlier German trademark, which covered similar services. Initially, the EUIPO’s Opposition Division upheld the opposition, but this decision was later annulled by the EUIPO’s Board of Appeal (BoA), leading to the General Court’s final decision.

Court Findings

The General Court focused on the descriptive nature of the word elements ‘Paris Bar’ and ‘Bar Paris’, given their association with Parisian culture and gastronomy. Despite their arrangement, these elements were considered lowly distinctive. The inclusion of a Gallic rooster as a figurative element in the contested trademark was deemed as distinctive and dominant as the word elements. However, the court ruled that there was only a low degree of visual similarity on account of the inversed order of the words, a high degree of phonetic similarity, and a limited conceptual impact due to the generic nature of the words.

The Court confirmed the Board of Appeal’s finding that the inherent distinctiveness of the earlier mark is very low. The opponent’s claim of increased distinctiveness due to intensive use was rejected because of insufficient evidence relating to one single bar in Berlin.

Ultimately, the General Court ruled out the likelihood of confusion based on the visual perception of the trademarks, which it considered predominant in the context of buying foodstuffs and visiting restaurant. This decision emphasizes the importance of visual differences in distinguishing trademarks, especially when the word elements are considered generic or descriptive.

 

ZERO MEAT v MEAT ZERO (R 2052/2023-2)

 v

Background

On september 29, 2021, CPF Food and Beverage Co., Ltd. applied for registration of the ‘ZERO MEAT’ trademark for meat substitutes, which was opposed by Norma based on their earlier ‘MEAT ZERO’ trademark. The opposition was initially upheld due to a likelihood of confusion, but the decision was overturned by the Board of Appeal.

Board of Appeal’s decision

The BoA found that the words ‘zero’ and ‘meat’ are basic English terms understood across the European Union, thus possessing low distinctiveness. The arrangement of these words and the inclusion of a numeral and color differences in the trademarks contributed to their overall impression, which the BoA found distinct enough to avoid confusion. Indeed, the different layout and color shades were significant enough to differentiate the trademarks in the market.

Finally, both trademarks referred to meat-free products and an environmentally friendly ethos, yet this was not enough to confuse the average consumer due to the non-distinctive nature of the descriptive words used.

Conclusion

The decisions in both Paris Bar v Bar Paris and ZERO MEAT v MEAT ZERO underline the importance of the distinctiveness of the elements that compose a trademark in determining the likelihood of confusion. These cases demonstrate that non-distinctive or descriptive elements afford a limited scope of protection, which is a crucial consideration for businesses when developing brand identifiers.

Finally, these decisions which do not appear to be in line with the case of the Court of Justice of the European Union might encourage a reevaluation of the CJEU’s approach regarding the weight given to the distinctiveness of earlier trademarks.

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Definition of a Deceptive Trade Mark in the European Union: What About Incorrect Information Regarding the Company?

Written by Dreyfus02/09/2024

The legal debate surrounding deceptive trade marks has taken on new significance with a preliminary question recently referred to the Court of Justice of the European Union (CJEU). This question focuses on the precise definition of a deceptive trade mark, particularly when the misleading information pertains not to the characteristics of the products or services but to the company itself.

 

Background of the Case

The case involves the French company Fauré Le Page, initially known for selling weapons and ammunition, as well as leather accessories. Founded in 1716 in Paris, the original Maison Fauré Le Page ceased operations in 1992, after which all its assets were transferred to its sole shareholder, the Saillard company. In 1989, Saillard filed an application for the French trade mark “Fauré Le Page,” covering products such as firearms and their parts, as well as leather and imitation leather goods.

 

In 2009, this trade mark was sold to a new entity, Fauré Le Page Paris, established that same year. This company subsequently filed, in 2011, two applications for French trade marks, both containing the words “Fauré Le Page Paris 1717” and covering various leather goods. However, these trade marks were contested by the company Goyard ST-Honoré, which sought their cancellation on the grounds that they were misleading, based on the old Trade Mark Directive (Directive 2008/95/EC, replaced by Directive (EU) 2015/2436).

 

Legal Framework

European trade mark legislation, particularly Article 4(1)(g) of the Trade Mark Directive (Directive (EU) 2015/2436), stipulates that a trade mark may be refused registration or annulled if it is “of such a nature as to deceive the public, particularly as to the nature, quality, or geographical origin of the goods or services.” Additionally, Article 20(b) of the same directive provides for the revocation of a trade mark if, after its registration, it becomes deceptive due to the use made of it by its proprietor or with the proprietor’s consent.

 

The main issue is whether a trade mark can be considered deceptive when it conveys false information not about the characteristics of the products or services, but about the attributes of the company itself, such as its founding date or age.

 

The Decision of the Court of Appeal and the question asked by the French Supreme Court (Cour de Cassation) to the CJUE

The Court of Appeal of Paris ruled that the “Paris 1717” trade marks was invalid. It found that the mention “Paris 1717” referred to the location and date of establishment of the company, which could mislead the public into believing in the continuity of the company’s operations since that date and the supposed transfer of know-how from the original Maison Fauré Le Page to Fauré Le Page Paris. This judgment was based on the fact that the original company had ceased its activities in 1992, while the new entity was founded in 2009.

 

However, Fauré Le Page Paris appealed this decision to the Cour de Cassation, arguing that Article 4(1)(g) of the Trademark Directive required deception regarding the characteristics of the products and services, not the qualities of the trade mark owner, such as the company’s founding year.

 

The Preliminary Question to the CJEU

Faced with this interpretation of the law, the Cour de Cassation decided to refer a preliminary question to the CJEU. It asks whether a trade mark can be considered deceptive when the false information concerns the age, reliability, and know-how of the manufacturer, rather than the characteristics of the goods themselves. Specifically, it poses two questions to the CJEU:

 

  1. Should Article 4(1)(g) of Trademark Directive be interpreted to mean that a reference to a fictitious date in a trade mark, conveying false information about the age, reliability, and know-how of the manufacturer, is sufficient to establish the existence of actual deception or a serious risk of deceiving consumers?

 

  1. If the answer to the first question is negative, should that article be interpreted to mean that a trade mark can be considered deceptive if there is a likelihood that consumers will believe that the trade mark owner has been producing these goods for centuries, thereby conferring a prestigious image on them, when this is not the case?

 

The outcome of this case could have significant implications for companies using historical references in their branding strategy. If the CJEU concludes that such a practice is deceptive, it could broaden the grounds for annulment of trade marks to include false information about the company itself, not just the products or services.

 

There is already precedent in European case law. For example, in the W. F. Gözze Frottierweberei and Gözze case (C-689/15), the CJEU ruled that for a trade mark to be deceptive, it must, by itself, create a risk of deceiving consumers, regardless of the use made of it after registration.

 

Furthermore, if the preliminary question had been posed under Article 20(b) of TMD3, which focuses on deceptive use of the trade mark after registration, the answer might be different. This article does not limit deception to the characteristics of the goods or services but could include misleading information about the company.

 

In any case, if the geographical origin of goods and services can be considered an important characteristic under Article 4(1)(g) of the Trademark Directive, why not the founding date of the company? Both are intangible properties, but they can significantly impact the perceived quality of goods and services and consumers’ purchasing decisions.

Future Implications

The decision the CJEU makes in this case will be crucial. It could redefine the legal criteria surrounding the notion of a deceptive trade mark, with potential repercussions for branding strategies, particularly in the luxury sector, where history and heritage play a key role. Companies may need to reassess their branding strategies to ensure that any historical or prestigious references are not perceived as misleading by consumers.

 

It is essential for companies to take a proactive approach to trade mark management, ensuring that the historical or prestigious information they use does not mislead consumers. The CJEU’s decision could also have an impact beyond Europe, influencing trade mark practices globally.

 

This case highlights the increasing importance of protecting consumers against misleading commercial practices and underscores the need for companies to maintain full transparency in their brand communication.

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Understanding the Declaration of Use in Argentine Trademark Law: A Comprehensive Guide

Written by Dreyfus27/08/2024

Image generated by DALL E 3 Microsoft version

In Argentina, the robust protection of intellectual property rights, particularly trademarks, hinges significantly on procedural compliance. One such critical procedural requirement is the filing of a Declaration of Use, which plays a pivotal role in the lifecycle of a trademark.

 

This guide delves into the nuances of this requirement, its implications for trademark holders, and the associated legal and administrative processes.

The Legal Imperative of the Declaration of Use

Under Argentine trademark law, every trademark holder is obliged to file a mid-term affidavit of use, known as the Declaration of Use, between the fifth and sixth anniversaries of the trademark’s registration. This declaration serves as a key checkpoint to ensure that trademarks registered in the country are actively utilized in commerce.

 

The failure to comply with this requirement has significant repercussions. Primarily, the Trademark Office (TMO) will not approve any renewal applications for the trademark until the Declaration of Use has been appropriately filed for the registration period in question. This mechanism ensures that only those trademarks that are actively used continue to enjoy the legal protections afforded by registration.

 

Contents and Submission of the Declaration

The Declaration of Use involves submitting a written statement that lists the goods and/or services for which the trademark has been actively used over the past five years. This list should encompass all products or services that fall within the trademark’s scope of protection, potentially extending to related goods or services even in different classes or those used as a commercial designation.

 

It is crucial to note that at the time of this filing, the Patent and Trademark Office (PTO) does not require evidence of actual use. The primary goal is to receive a formal declaration from the trademark holder. However, should the declaration not be submitted timely, it triggers a rebuttable presumption of non-use. This does not automatically lead to the expungement of the registration but makes the trademark vulnerable to cancellation actions. Such actions can be initiated by third parties demonstrating a legitimate interest or by the PTO itself.

Concurrency with Renewal and Potential Penalties

The Declaration can also be filed concurrently with the trademark’s renewal application. In such cases, it must be submitted immediately before the renewal application and through a specific process tailored for each class involved. If the declaration accompanies a renewal, additional annual official fees are imposed.

 

Be aware that submitting a false declaration, whether due to error or fraud, can precipitate cancellation proceedings. These proceedings can be initiated by any third party with a legitimate interest and are adjudicated through a judicial process, underscoring the importance of accuracy and honesty in the filing.

Fees and Administrative Details

The cost of filing the Declaration of Use is relatively modest. There is a fee per trademark, per class and a late filing during the grace period.

Documentation Requirements

To file the Declaration of Use, certain documents are essential:

 

  • Power of Attorney (PoA): A notarized and legalized PoA, signed by an authorized representative, must be submitted. This can be legalized via an Apostille or directly at the Argentine Consulate. Although a scanned copy of the PoA suffices for initial deadlines, the original should be available upon request by the TMO.
  • List of Goods/Services: A detailed list of the goods and/or services associated with the trademark usage over the last five years must be provided. This documentation should comprehensively cover the trademark’s scope of protection and related commercial uses.

 

Conclusion

The Declaration of Use is a fundamental element of trademark law in Argentina, ensuring that trademarks are not merely registered but actively employed in commerce. By adhering to these requirements, trademark holders can safeguard their rights and maintain the integrity of their brands in the Argentine market.

At Dreyfus Law Firm, we understand the complexities of trademark law in Argentina. Our experienced team provides comprehensive legal support to ensure that your Declaration of Use is filed accurately and on time, protecting your valuable trademark rights. Trust us to navigate the intricacies of Argentine trademark law, ensuring your intellectual property remains secure and enforced.

 

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Rising Tensions in E-Commerce: The Escalation of Domain Name Disputes

Written by Dreyfus13/08/2024

Image generated by DALL E 3 Microsoft version

In the digital age, where e-commerce has become the backbone of global commerce, domain names have evolved beyond mere digital addresses—they are now integral to a company’s brand and identity. As businesses rush to establish their online presence, the demand for distinctive domain names has surged, leading to an increasing number of disputes over these valuable digital assets. This escalation is a direct consequence of the competitive digital marketplace and the critical role domain names play in brand recognition and consumer trust.

 

The Nexus Between Trademarks and Domain Names

 

A trademark, typically a symbol, word, or phrase, serves to identify and distinguish the source of goods or services of one entity from those of others. Similarly, a domain name functions as a unique online identifier, guiding consumers to a company’s digital storefront. The intersection of trademarks and domain names is particularly pronounced in e-commerce, where a domain name not only represents a business’s online location but also reinforces its brand identity.

 

However, this intersection can also be a flashpoint for conflict, particularly through the practice known as “cybersquatting.” This involves registering domain names that are identical or confusingly similar to well-known trademarks with the intent to sell them back to the trademark owner at a profit, or to misuse the brand’s reputation. Such practices have necessitated robust mechanisms for dispute resolution, leading to a rise in complaints under policies like the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

 

Understanding the UDRP Framework

 

The UDRP is a policy used by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve domain name disputes. It is predicated on the principle that domain names should not unjustly infringe upon trademark rights. For a complaint to be successful under the UDRP, the trademark owner must prove three elements:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
  • The registrant of the domain name has no legitimate interests in respect of the domain name.
  • The domain name has been registered and is being used in bad faith.

 

Meeting these criteria can lead to the transfer of the domain name from the registrant to the complainant, thus acting as a critical mechanism for protecting trademark rights in the digital realm.

The Process of Filing a UDRP Complaint

 

Filing a UDRP complaint involves several steps:

 

Choosing a Provider: There are several ICANN-approved UDRP providers, such as the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), and others, each with specific procedures.

 

Reviewing the UDRP Policy: Complainants must familiarize themselves with the UDRP policy to ensure that their case complies with the necessary criteria for domain dispute resolution.

 

Preparing and Submitting the Complaint: The complaint must detail the domain name in question, the identity of the respondent (current domain owner), and the basis of the claim. Evidence supporting the claim is crucial.

 

Paying the Filing Fee: Fees vary by provider and must be paid at the time of filing.

 

Submitting the Complaint: Complaints are submitted according to the specific rules of the chosen provider. Recent updates to the UDRP include a new online form for submissions, enhancing the efficiency and reliability of the process.

 

Recent Developments in the UDRP System

 

Recent updates to the UDRP process aim to enhance its accessibility and efficiency. These include a new template for complaints and responses that offers detailed guidance on crafting a compelling case, and an updated online submission form that ensures a smoother, more secure filing process. Additionally, the updated WIPO Guide to the UDRP provides comprehensive advice on preparing for a UDRP case, including navigating post-GDPR challenges related to registrant information and considering the impact of a domain’s renewal date on the complaint.

 

Conclusion

 

As the internet continues to be a battleground for brand identity, the UDRP stands as a critical tool for businesses to protect their trademarks in the digital marketplace. By understanding and utilizing this dispute resolution policy effectively, businesses can safeguard their online presence against the growing threats of cybersquatting and other malicious practices, ensuring that their digital and physical branding strategies align seamlessly for maximum impact and consumer trust.

 

 

To effectively navigate these complex conflicts and protect your online rights, it is essential to surround yourself with experts. Dreyfus, recognized for its expertise in the field of domain names and related disputes, can provide invaluable assistance in securing and effectively defending your digital assets under the UDRP policy and beyond.

 

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Safeguarding brands online: Strategic methods for effective enforcement!

Written by Dreyfus06/08/2024

Image generated by DALL E 3 Microsoft version

July 9, 2024

Ensuring brand protection on the Internet can seem like a monumental task.

The digital landscape evolves quickly, providing infringers numerous ways to illegally profit from others’ brands. In this constantly changing environment, it is essential to understand the various possible strategies.

Without a clear online protection and defense strategy, companies may find themselves playing an endless game of “whack-a-mole” to try to counter threats.

 

Identifying problems and their impact

 

The first step in developing an online brand protection strategy is to identify the infringements the brand faces and understand why they cannot be tolerated.

Infringements are many and can include especially fake e-commerce sites, cases of phishing scams aimed at obtaining customers’ financial information, identity theft or false information brochures.

The impacts can vary: loss of revenue, reputational damage due to poor-quality or dangerous counterfeit products, management liability or consumer complaints.

 Defining strategy goals and success metrics

 

In an ideal world, the goal would be to entirely eliminate the infringements. However, given the resource imbalance between brands and infringers, this is rarely achievable.

 

A viable strategy might instead aim to disrupt cybersquatters and counterfeiters, making the brand more difficult or risky to counterfeit. It is also recommended to educate consumers about the risks of buying counterfeit products.

 

It is also possible to seek to make intermediaries aware of their responsibilities, such as online marketplaces, pushing them to improve their infringement detection and management processes.

 

 Measuring success

 

The goal must be realistic and success measurable, although this is often difficult to assess the number of sales diverted from counterfeit products.

We recommend using other metrics that could include:

– Targeted response rates

– The number of website takedowns achieved

– The number of infringing domain names canceled.

Robust monitoring and investigations

 

Once a problem is identified, the next steps are to gather contextual information, determine the problem’s origin, and identify the various protagonists involved before deciding on an approach.

Once the investigation had been carried out, the approach depends on the trademark owner’s goals : getting a site blocked, recovering the disputed domain name, obtaining damages, protecting consumers or even defending executives and the executive comity.

Depending on the situation, we recommend to send a cease and desist letter to the various parties in a case, to request for the site to be blocked by web hosting services and technical intermediaries, to filing a UDRP complaint or to undertake a legal action in a civil or criminal court.

 Engaging with intermediaries

 

Establishing good relationships with intermediaries such as ISPs, e-commerce platforms, search engines, and payment providers is a valuable tactic in online protection. Responsible and responsive intermediaries can help rights owners tackle issues such as misleading ads, fraudulent domain registrations, phishing campaigns, counterfeits, grey imports, piracy, and ID theft.

 

Implementing trademark monitoring among domain names to detect infringements as soon as possible

In order to be aware of trademark infringement in domain names, it is recommended to set up a watch among gTLD and ccTLD domain names. If a domain name appears problematic, it’s also possible to carry out a specific watch. There is a whole range of watches available, and we can advise you on the ones best suited to your situation.

The online world evolves rapidly. Online protection teams must stay updated with technological developments and new platforms to ensure their strategy evolves with the market. Regular reviews are essential to avoid rights holders constantly playing catch-up with bad actors.

Adopting a proactive and strategic approach to online brand protection enables companies to defend against cybersquatters while strengthening their reputation and ensuring customer loyalty. At Dreyfus, we are committed to providing tailored solutions to meet these challenges and protect your brands in the ever-changing digital landscape.

 

As the legal framework continues to evolve, it’s essential to remain informed and adapt your brand strategy.

Dreyfus partners with an international network of Intellectual Property attorneys

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Enhance Your Intangible Assets with the IP Strategy Diagnostic

Written by Dreyfus16/07/2024

At Dreyfus, we understand the critical importance of protecting and valuing your company’s intangible assets. This is why we offer tailored support through the IP Strategy Diagnostic, an initiative supported by Bpifrance.

What is the IP Strategy Diagnostic?

The IP Strategy Diagnostic, implemented by Bpifrance, is designed to assist innovative Start-ups, SMEs, and mid-sized companies. It provides financial aid covering 80% of consulting costs, up to a maximum of €10,000 excluding VAT. This initiative aims to develop a suitable intellectual property (IP) strategy, enabling the valuation of your intangible assets such as patents, trademarks, designs, software, and data.

Objectives of the IP Strategy Diagnostic

The primary goal of the IP Strategy Diagnostic is to strengthen your IP strategy, which is essential for your company’s growth. Key objectives include:

 

– Identifying and evaluating your assets : Determine the strengths and improvement areas of your intangible assets.

– Securing professional relationships : Protect IP aspects in your interactions with clients, partners, and employees.

– Developing an action plan : Implement concrete steps for the protection and valuation of your assets, aligned with your commercial strategy.

– Competitive analysis : Understand the IP strategies of other market players and anticipate potential challenges.

 

 Implementation Process

The IP Strategy Diagnostic process involves several stages :

 

  1. Initial assessment : Analyze existing intangible assets in relation to your projects and market.
  2. Strategy definition : Develop an IP strategy with specific actions to protect and value your assets.
  3. Implementation and training : Propose suitable training and implement the recommended actions.

 

 Costs and Funding

The total cost of this service ranges from €3,000 to €10,000 excluding VAT, depending on your company’s complexity and specific needs. With Bpifrance’s subsidy covering 80% of the costs, you can receive financial support ranging from €2,400 to €8,000 excluding VAT.

 Eligibility Criteria

 

The IP Strategy Diagnostic is available to independent Start-ups, SMEs, and mid-sized companies registered in France, with fewer than 2,000 employees. To benefit, a prequalification phase with an expert recognized by Bpifrance is required. Once validated, you can submit your funding request through your online Bpifrance account.

 

 Dreyfus Expertise

With over 30 years of experience, Dreyfus is renowned for supporting companies in protecting and valuing their intangible assets. Our experts assist you in:

 

– Feasibility assessment of your projects : Analyzing objectives, markets, strengths, and constraints.

– Development of your IP strategy : Creating and managing your IP portfolios.

– Valuation of your assets : Conducting audits, evaluations, and providing investor advice.

–  Protection of your assets : Managing disputes, opposition, arbitration, and mediation.

– Contract drafting : Negotiating and drafting IP-related agreements and business contracts.

–  Competitive intelligence : Technical and legal monitoring.

– Training and awareness : Custom training programs to meet your needs.

 

 Conclusion

At Dreyfus, we are committed to helping you optimize the value of your intangible assets and secure your operations with a well-defined intellectual property strategy. Contact us to learn more about our support and how we can assist you in benefiting from Bpifrance’s IP Strategy Diagnostic.

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Outsmarting Dupes: Essential Strategies to Protect and Enhance Your Trademarks

Written by Dreyfus02/07/2024

Image generated by DALL E 3 Microsoft version

In an increasingly globalised world, companies are faced with a growing problem: dupes. Dupes have become an increasingly prevalent phenomenon in the field of intellectual property, especially in trademark and design enforcement.

A dupe is a product inspired by an original product that attempts to capture the look, style and even the packaging of the original product, without being an exact reproduction. Duplicate” is neither a reproduction nor an imitation or copy. Unlike counterfeiting, which illegally reproduces a protected brand, dupes often play in legal grey areas. They use names, logos or packaging that evoke the original without copying them directly. In fact, the aim of the dupe manufacturer is not to make people believe that his articles are those of the brand from which he takes his inspiration, but to capture the attention of consumers by following in the footsteps of the trademark owner, without however copying exactly the distinctive elements of that brand.

 

How can companies effectively protect their trademarks and innovations in an environment where dupes exploit legal grey areas without explicitly breaking intellectual property laws?

 

Dupes can seriously compromise companies’ revenues by offering low-cost alternatives. While some consumers knowingly buy an imitation, many others are fooled by the striking resemblance into believing they are buying a genuine product for less.

 

However, the quality of these ‘inspired products’ is often much lower than that of the originals, which can seriously damage the reputation of the original trademark. When consumers associate the poor quality of dupes with the genuine trademark, this can lead to a decline in trust and loyalty.

 

Pursuing legal action against dupe manufacturers is often a complex and expensive process. It requires considerable resources, both in terms of time and money, but it is essential to protect trademarks and maintain their integrity in the marketplace.

A few strategies to counter the harmful effects of dupes

 

In order to secure your trademark rights, it is essential to set up active market surveillance in order to quickly detect dupes. To do this, it is advisable to use online monitoring tools that can identify imitations on e-commerce platforms, social networks and other distribution channels. These sophisticated monitoring systems can provide immediate alerts if suspicious products are detected, enabling a rapid and appropriate response.

 

It is also essential to ensure that your trademarks and designs are properly registered and protected in all the territories in which you operate. This protection must include not only trademarks, but also copyrights and patents, where applicable. This may involve registering and protecting your packaging as a trademark. Distinctive and unique packaging can be legally protected, strengthening the defence against dupes. Well-designed and protected packaging can deter imitators and facilitate legal action against them. Protecting packaging also helps to maintain brand integrity and image.

 

Working with other companies to fight counterfeiters can also be very effective. Partnerships can include sharing information about counterfeiters and taking joint action to put pressure on online sales platforms to remove adverts for counterfeit products. Cross-sector cooperation can enhance the effectiveness of anti-counterfeiting measures.

 

Finally, it is advisable to implement traceability technologies such as QR codes or RFID (radio frequency identification) chips to enable consumers to check the authenticity of your products. These technologies can also help track and identify dupe distribution points. Increased traceability improves product transparency and safety, while making it easier to take action against counterfeiters.

Conclusion

Dupes represent a major challenge for businesses, but with a proactive strategy and concrete actions, it is possible to protect your trademarks and minimise their negative impacts. By combining market surveillance, legal protection, consumer education and the use of advanced technologies, you can strengthen the defence of your intellectual property.

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Intersection of AI and Copyright : a groundbreaking Czech ruling

Written by Dreyfus24/06/2024

Image generated by DALL E 3 Microsoft version

In an emblematic decision that underscores the complex relationship between artificial intelligence (AI) and copyright laws, the Municipal Court of Prague has set a precedent with potential far-reaching implications. This decision, one of the first of its kind in Europe, determined that an image generated by the AI tool DALL-E could not be copyrighted because it was not created by a natural person.

Background of the case

The case involved an unnamed claimant who used OpenAI’s DALL-E to generate an image for their website, with the prompt : “Create a visual representation of two parties signing a business contract in a formal setting, such as a conference room or a law firm office in Prague. Show only hands.” After the image was created and posted on the website, it was copied by a local law firm and used on their own website, presumably to illustrate a publication or message.

The claimant sought legal redress for copyright infringement, asserting authorship of the AI-generated image and requesting injunctive relief against the defendant.

Analysis of the decision

The crux of the court’s deliberation centered on the issue of authorship and whether an AI could be recognized as the author of a copyright work under existing legal frameworks. The Czech Copyright Act, particularly Article 40, recognizes the rights of the author, including the ability to challenge unauthorized use of their works. However, Article 5(1) of the Act specifies that the author is “the natural person who created the work.”

In this instance, while the claimant argued that the image was created under their instruction and thus, they were the rightful author, the court noted that the claimant had not provided sufficient evidence to substantiate this claim beyond their own testimony. Therefore, the claimant failed to meet the necessary burden of proof for establishing authorship and lacked the legal standing to pursue the claim.

Moreover, the court observed that the image, being the product of an Artificial Intelligence, did not fulfill the criteria of a work resulting from the creative activity of a natural person as required by the Act. Consequently, the image was not eligible for copyright protection.

Commentary

This ruling is not entirely unexpected given the current legal standards, but it does highlight several key considerations for the future of AI in creative domains. The court did not entirely dismiss the possibility that the plaintiff could be considered the author if sufficient evidence were presented. This opens up discussions on what could constitute sufficient evidence and the level of human involvement necessary for AI-generated works to qualify for copyright protection.

As AI technology continues to evolve and integrate more deeply into creative and commercial practices, this case sets a significant precedent. It emphasizes the necessity for artists, businesses, and legal professionals to consider alternative forms of protection, such as contracts, to safeguard their interests.

The decision also serves as a reminder of the urgent need for legislative bodies to revisit and possibly revise copyright laws to better accommodate the realities of AI-driven creativity. This is especially pertinent in Europe, where the integration of AI in various sectors is accelerating, necessitating clear legal frameworks that recognize and protect the contributions of both human and technological creations.

Dreyfus Lawfirm can offer expertise on Copyright and AI matters.

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France :fraud, a ground for the absolute nullity of a trademark independently of the risk oconfusion or intent to harm

Written by Dreyfus05/06/2024

Image generated by DALL E 3 Microsoft version

 

According to the fundamental legal principle “Fraus omnia corrumpit” (fraud corrupts everything), any trademark filed fraudulently cannot legitimately confer a valid protection right to the applicant.

The inherent complexity of the concept of fraud in the field of trade mark law stems from its lack of explicit definition, both in French law and in European Union law.

In ia ruling of January 31, 2024, the French Supreme Court -Cour de cassation clarified this concept, stating that the absence of a likelihood of confusion between the contested trademark and the prior trademark, as well as the absence of intent to harm by the owner of the contested trademark, are not grounds to dismiss fraud.

Context of the case

In this case, the company Turlen filed a request for invalidity with the Director General of the French Trademark office INPI against a word trademark that exactly reproduced its earlier mark and covered various similar goods and services, arguing damage to its reputation and a likelihood of confusion. The Director General of the INPI partially granted the request, cancelling the contested trademark for some goods and services while maintaining its validity for others. Consequently, Turlen appealed this decision to the Paris Court of Appeal.

Decision of the Court of Appeal

By a ruling dated February 11, 2022, the French Court of Appeal rejected Turlen’s claim, concluding that there was no likelihood of confusion between the two trademarks for certain goods and services. In addition, the Court held that without clear evidence of the applicant’s intent to harm, it was not possible to invalid the contested trademark for those goods and services for which no prejudice to prior rights had been established. Following this decision, the company filed an appeal with the Court of Cassation.

The Court of Cassation must determine if proving a likelihood of confusion between a contested trademark and a prior trademark is required to establish the existence of fraud in trademark application?

Strict Interpretation of Fraud

The decision of the Court of Cassation in this case represents a particularly strict interpretation of the concept of fraud in trademark registration. By overturning the Court of Appeal’s ruling, the high court affirmed that the absence of a likelihood of confusion or evidence of infringement of prior rights does not necessarily exclude the existence of fraud in the filing of a trademark application.

The Court of Cassation ruled that neither the absence of proof of intent to harm by the owner of the contested trademark, nor the validity of the trademark for certain goods and services, are sufficient to exclude the possibility of fraud at the time of filing. Indeed, fraud, as a cause of absolute nullity, must be considered independently of a potential infringement of prior rights. The Court of Cassation thus criticized the lower court judges for misapplying the legal rules by partially dismissing the fraudulent nature of the contested trademark filing.

Indeed, relative nullity applies in cases of infringement of prior rights, while absolute nullity, which includes fraud, affects the overall validity of the trademark. In this case, the Court of Cassation observed that the lower court judges had confused the two categories of nullity. They wrongly inferred that the absence of a likelihood of confusion or infringement of prior rights could exclude the presence of fraud. This confusion led to a misapplication of the law, requiring rectification by the Court of Cassation.

Consequences and impact of the ruling: strengthening trademark protection

This ruling by the Court of Cassation illustrates the strict application of the principle that “fraud corrupts everything,” regardless of circumstances such as likelihood of confusion or infringement of prior rights. The Court emphasized the importance of distinguishing fraud, considered as a cause of absolute nullity, from relative nullity causes in trademark law. This distinction is crucial to ensure that each type of nullity is addressed according to its own merits and legal specifics.

This decision, both unprecedented and welcome, strengthens trademark legal protection by highlighting the necessity of thorough examination of intent during the trademark application process. It also serves as a reminder to lower court judges of their duty to motivate their decisions.

Dreyfus Lawfirm can offer expertise on these matters, providing crucial strategic advice and guidance to secure your trademarks and ensure their protection against fraudulent filings, thereby ensuring an effective defence of your intellectual property rights.

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“Green” Trademark and Greenwashing

Written by Dreyfus27/05/2024

Image generated by DALL E 3 Microsoft version

In a context where environmental awareness is continuously growing, the demand for eco-friendly products is intensifying. This trend has led to a proliferation of brand names suggesting eco-friendliness. However, it has become difficult for the public to distinguish between brands genuinely committed to environmental efforts and those merely using “green” vocabulary to deceive consumers.

Indeed, in its impact assessment report accompanying the proposal for a Directive amending Directives 2005/29/EC and 2011/83/EU as regards empowering consumers for the green transition through better protection against unfair practices and better information, the European Commission’s Regulatory Scrutiny Board (RSB) noted that over 53.3% of environmental claims analyzed within the EU were found to be vague, misleading, or unfounded, while 42% lacked any tangible evidence. This is why the European Union has taken firm measures to regulate these practices.

 

The Rise of “Green” Trademarks

 

More and more consumers are prioritizing eco-friendly products. This growth in demand has pushed brands to reposition themselves, emphasizing their environmental commitments.

Brands have responded to this demand by choosing brand names using environmentally oriented vocabulary and incorporating green colors into their logos. Expressions like “green,” “sustainable,” “eco-friendly,” “natural,” or “biodegradable” are frequently used. This marketing approach, aiming to evoke a positive image and meet growing consumer expectations, is also found in logos incorporating leaves, trees, the planet, or green or blue colors to reinforce this image.

In 2021, a study carried out by the EUIPO through the European Observatory on Infringements of Intellectual Property Rights examined the increasing frequency with which goods and services specification of EUTMs reflect issues related to environmental protection and sustainability. An algorithm was developed to search among the more than 65 million terms contained in EU trademark (EUTM) applications filed over the years to identify those containing at least one “green” term. More than two million EU trademark applications filed with the EUIPO since it began operation in 1996 were considered.

The study shows that the number of “green” EUTM filings has increased significantly since the office began its activities in 1996, both in absolute terms and as a proportion of all EUTM filings.

Green EUTM Filing, 1996-2020 (EUIPO)                   Green EUTM filings as a share of all EUTM filings, 1996-2020 (EUIPO)     

 

However, trademark registration applications that specifically include direct environmental claims can be refused. These refusals are usually based on the descriptive nature of the mark, although there may also be another reason related to the misleading nature of the trademark.

Therefore, the use of unjustified green trademark will lead to accusations of greenwashing.

Indeed, with the explosion of green marketing, greenwashing practices have also multiplied, attracting the attention of regulators, legislators, and potential litigants such as competitors, customers, or consumer protection organizations.

 

Greenwashing

 

Greenwashing is the use of ecological terms or symbols without them corresponding to actual practices. The goal is to give a falsely eco-friendly image to attract consumers. Brands that engage in greenwashing seek to capitalize on the growing market for eco-friendly products without genuinely investing in environmentally friendly practices.

In this context, the European legislator has intervened again with Directive 2024/825 of February 28, 2024, amending Directives 2005/29/EC and 2011/83/EU on unfair commercial practices. This directive is in line with the European Green Deal and the European Circular Economy Action Plan. It aims to “enable consumers to make better-informed business decisions to promote sustainable consumption, eliminate practices that harm the sustainable economy, and divert consumers from sustainable consumption choices.” It creates an action plan for the green transition, targeting greenwashing with three principles. Firstly, brands must be able to prove all their environmental claims. Secondly, the claims must be validated by an independent body. Finally, consumers must receive clear and reliable information. Member States have a 24-month period to transpose the directive into their national laws from March 6, 2024.

France had already introduced provisions to specifically sanction greenwashing statements from January 1, 2023, with Decrees No. 2022-538 and 2022-539 of April 13, 2022, prohibiting advertisements stating that a product or service is carbon-neutral unless a report explaining how carbon neutrality is achieved is published and updated annually.

Greenwashing statements could already be sanctioned on the ground of unfair competition and misleading commercial practices since Law No. 2021-1104 of August 22, 2021, on Climate and Resilience. The new law gives an environmental dimension to the definition of misleading commercial practices.

Conclusion

The proliferation of “green” trademarks names is a natural response to the growing demand for environmentally friendly products. However, greenwashing practices threaten trust in eco-friendly initiatives. To avoid pitfalls and create credible green trademarks, it is essential to follow a transparent strategy, comply with environmental standards, and involve competent experts. The protection of eco-friendly brands and the fight against misleading practices also require increased consumer vigilance and support from lawyers and intellectual property attorneys specializing in this field.

Dreyfus partner with an international network of Trademark attorneys

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