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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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The excitement surrounding the imminent Paris Olympic Games demonstrates the links between brands and athletes. In a media environment where authenticity and visibility are crucial to commercial success, partnerships with Olympic and Paralympic athletes represent exceptional visibility opportunities for brands. However, these collaborations must be meticulously managed within the framework of precise legislation, to prevent any transgressions, such as ambush marketing or infringement of intellectual property rights. These precautions are essential to ensure that promotion complies with established regulations.

Legal Framework for Olympic and Paralympic Games Communications

The regulatory framework governing communications associated with the Olympic and Paralympic Games is designed to protect the exclusive rights of official partners and uphold the integrity of Olympic trademarks. These assets, listed in article L 141-5 of the French Sports Code, include emblematic symbols such as the Olympic rings and legally protected terms such as ‘Olympic’ or ‘Paralympic’. These elements are registered trademarks subject to rigorous regulations concerning advertising and partnerships.

Consequently, it is essential to meticulously craft a commercial strategy to prevent ambush marketing tactics, which involve unauthorized associations with the Games for commercial gain. For instance, posting an athlete’s performance on social media and using tags that incorporate Olympic assets without official authorization from the organizing committees. Such practices, often perceived as attempts to gain undue association with the event without being an official sponsor, can lead to legal action for trademark infringement.

It is important to distinguish between two main periods for communication campaigns: outside the Games and during the Olympic Games, each governed by its own set of rules and restrictions.

Use of athletes’ images outside the Games: freedom with conditions

Outside the periods of the Olympic and Paralympic Games, brands and companies without official partnerships or licenses with the International Olympic Committee (IOC) can still collaborate with athletes to promote their products or services. These non-official partners, who have personal agreements with the athletes, may use the athletes’ names and images in their advertising, provided they do not use or reference protected Olympic trademarks. This restriction aims to prevent any confusion or implicit association with the Olympic Games, thereby safeguarding the exclusive rights of official partners while allowing athletes to benefit from personal endorsements to highlight their sporting achievements.

Communications management during the Games: Compliance with Rule 40

Rule 40 of the Olympic Charter and the IPC Handbook sets out guidelines for the use of participants’ images in advertising at the Olympic and Paralympic Games. Established to preserve the authenticity of the Games and avoid excessive commercialisation, this rule aims to ensure that athletic performances remain the focus of attention, while protecting the exclusive fundraising rights of the official partners.

During the Games period, from 18 July 2024 (opening of the Olympic Village) to 13 August 2024 (two days after the Closing Ceremony), advertising must adhere to specific standards to be considered compliant. Advertisements must be “generic” and established well before the onset of the Games—initiated at least 90 days prior and officially registered on a designated platform by June 18, 2024.

Such campaigns must consistently maintain their pre-Games intensity without any significant amplification during the Games themselves, to prevent any implied association with the Games or its organizing bodies like the IOC, IPC, CNOSF, CPSF, Paris 2024, or the French delegation. The only permissible link to the Games in these advertisements is the inclusion of an athlete’s image, ensuring that all promotions remain within the framework designed to protect the Games’ integrity and the interests of its official sponsors.

As a result, official Olympic and Paralympic partners who have signed personal agreements with an athlete are authorised to use the athlete’s image and to broadcast advertisements in accordance with the terms of their contract with the International Olympic Committee and other organisations governing the Games. These partners can thus actively promote their collaboration with the athletes.

On the other hand, for non-Olympic or Paralympic partners, the Games period imposes specific restrictions: they may continue to broadcast advertisements as long as they do not use any Olympic assets and remain non-generic.

In addition, constant vigilance is required to monitor advertising campaigns during the Games in order to adjust or correct any communication that might violate these rules. This monitoring helps to maintain a balance between the visibility given to official sponsors and the restrictions imposed on non-official partners, thereby ensuring fair competition and respect for the Olympic spirit.

Prioritising vigilance: the key to success for Olympic and Paralympic athlete partnerships

The Olympic Games period offers a unique opportunity for athletes’ partners, incorporating legally informed commercial strategies that not only maximise the impact of partnership campaigns but also ensure brands are protected from potentially onerous legal risks. It is crucial to meticulously plan the launch of your advertising campaigns, to maintain transparent communication with the Games organising committees, and to ensure that the distribution of these campaigns does not cause confusion as to official affiliation with the Games or respect for Olympic intellectual property rights.

Dreyfus Lawfirm can offer expert assistance on these matters, strategic advice and guidance that are crucial to establishing a fruitful and serene partnership and collaboration at this exceptional time.

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On January 23, 2024, the Amiens Court of Appeal issued a significant ruling that defines the obligations of online hosting platforms in managing fraudulent advertisements. This ruling represents the first application in France of the GLAWISCHNIG-PIESCZEK jurisprudence, which was established by the Court of Justice of the European Union on October 3, 2019. The 2019 judgment underscored the need for a balanced approach between consumer protection and the regulatory duties of digital platforms. The recent decision by the Amiens Court of Appeal further clarifies the legal framework for hosting providers, underscoring their crucial role in preventing fraudulent content and ensuring safer online environments for users.

Context: negligence on the part of the accommodation provider in the face of reported fraudulent advertisements

In August 2020, a couple booked a vacation home through an ad on the Abritel website and paid €5,600, only to find out the listing was a scam, previously reported by the property’s actual owner. Despite these warnings, Abritel did not remove the ad. The Court of Senlis initially denied the couple’s request for compensation, leading them to appeal. They argued that Abritel failed to meet its obligations by not deleting the fraudulent listing. The Amiens Court of Appeal was tasked with determining if Abritel’s lack of action violated its legal duties under the French digital economy trust law (LCEN) and whether such negligence could establish legal liability.

Legal analysis: host liability in cases of knowledge of illicit content

The Court of Appeal upheld the judgement of the Senlis judicial Court, based on a strict interpretation of the French law on confidence in the digital economy (LCEN), n° 2004-575 of 21 June 2004. According to this law, the obligations of hosting platforms do not include proactive and systematic monitoring of all content published by users. Hosting providers are only liable if they have proven knowledge of the illegal nature of the content and fail to act quickly to remove it. Therefore, in the absence of evidence of such actual knowledge, web hosts are not liable for fraudulent acts committed by third parties.

In this case, however, the court found the host at fault and established its liability. The host removed the fraudulent advertisement two days after learning of its illegal nature. This delay was deemed insufficient by the court, which ruled that the host had not acted “as promptly as a diligent operator should have done.” The decision emphasizes the importance for hosting platforms to take immediate and effective action upon discovering illegal content to avoid liability.

Analysis of legal causality: No direct link between the web host’s fault and the damage suffered

The Court of Appeal of Amiens determined that the web host was not responsible for the losses incurred by a couple following a fraudulent transaction on their platform. Although it was established that the host did not act swiftly enough in removing a fraudulent advertisement, no legal consequences followed. The court pointed out the absence of a direct causal connection between the host’s delay in removing the advertisement and the couple’s financial loss. This was largely because the couple had opted to proceed with the payment outside the secure payment systems provided by the platform, contrary to the clear guidelines stated in the general terms and conditions. This decision highlights the critical role of following platform-specific security measures to avoid such risks.

Legal implications for hosting platforms: enhancing responsibilities in fraud prevention

 The recent ruling by the Court of Appeal of Amiens represents a notable advancement in the legal framework concerning the responsibilities of hosting platforms regarding fraudulent advertisements. The Court has elucidated that while hosting providers are not mandated to proactively screen every advertisement without initial notification, they are obligated to respond swiftly upon identifying illegal content. This clarification not only reinforces their legal responsibilities but also emphasizes the importance of users maintaining vigilance and adhering to recommended security measures to protect their transactions.

Moreover, this judgment could prompt legislative efforts to enhance the accountability of platforms, especially in combating online fraud. The persistence of these challenges, as evidenced by cases like the 2021 Abritel incident, highlights the ongoing need for greater regulatory scrutiny.

This case, in conjunction with the Glawischnig-Piesczek decision by the Court of Justice of the European Union, underscores the increasing necessity for digital platforms to take proactive steps against online misconduct. These decisions are gradually reshaping the roles and duties of platforms within the dynamic digital landscape, emphasizing the urgency for a robust regulatory framework to ensure a secure and trustworthy online environment.

Dreyfus Lawfirm can offer expert assistance on these matters, providing guidance and strategic advice to navigate the complexities of online fraud and platform liability.

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The fight against counterfeiting is a major challenge for the European Union, where the effective protection of intellectual property rights is recognized as a central pillar in supporting an innovative, resilient and competitive economy. The European Commission’s recommendation on March 19, 2024, heralds a pivotal move towards bolstering defenses against counterfeiting—a menace that not only siphons economic vitality but also poses significant risks to consumer safety and environmental sustainability. This comprehensive strategy underscores the European Union’s commitment to fostering an innovative, resilient, and competitive marketplace by safeguarding the fruits of ingenuity and hard work.

The critical nature of the Recommandation

Counterfeiting is a formidable adversary, casting a long shadow over nearly half of the EU’s GDP and jeopardizing 40% of its employment. The sectors at the forefront of green technologies and creative industries find themselves at the crossroads of innovation and infringement, making the battle against counterfeit goods a central economic and health issue.

Recommendation Highlights: A Blueprint for Action

The recommendation introduces key measures to strengthen cooperation between right holders, intermediary service providers and competent authorities. It promotes the use of appropriate tools and technologies to effectively combat counterfeiting and piracy.

These measures aim to protect investment and encourage innovation. They provide a framework for coordinated action against counterfeiting activities, essential for SMEs and industries dependent on intellectual property rights.

Implementation and challenges

The Recommendation underlines the need for coordinated action between Member States, right holders, intermediary service providers and competent authorities. It proposes a series of measures aimed at strengthening cooperation and efficiency in the enforcement of intellectual property rights across the European Union.

The Commission encourages the adoption of a set of tools and practices to combat counterfeiting effectively. This toolbox aims to promote cooperation between the various players involved, the use of cutting-edge technologies and the adoption of sector-specific best practices. It includes, for example, guidelines for monitoring online markets and managing infringement notifications, as well as recommendations for the use of counterfeit product recognition technologies.

Facing Implementation Headwinds

While the recommendation charts a course towards a fortified intellectual property regime in the EU, its successful implementation hinges on overcoming several challenges. This includes specific training on the latest trends in counterfeiting and the use of available technological tools to identify and track counterfeit products. Collaboration with experts in intellectual property and cybersecurity is essential to adapt enforcement strategies to emerging challenges.

A major challenge lies in the need for close international cooperation, given the cross-border nature of counterfeiting. The variability of legal frameworks and available resources between countries complicates the harmonization of efforts. Establishing effective mechanisms for judicial cooperation and information sharing between national and international authorities is crucial.

Another major challenge is to ensure that measures taken respect fundamental rights, such as the protection of personal data and freedom of expression. It is vital to establish clear and fair procedures for handling infringement notifications and for the intervention of the authorities, in order to avoid abuse and protect the legitimate interests of the parties concerned.

Counterfeiting often benefits from technological advances to evolve and adapt rapidly. Enforcement strategies must therefore be dynamic and capable of adjusting to new counterfeiting methods, while exploiting emerging technologies to improve the effectiveness of the fight against counterfeiting.

Conclusion: A Forward-Thinking EU in the Face of Counterfeiting

The European Commission’s recommendation on March 19, 2024, is a testament to the EU’s forward-thinking strategy in protecting intellectual property rights. It not only aims to safeguard the bloc’s economic interests and consumer safety but also sets a global standard for combating counterfeiting. As Europe embarks on this ambitious journey, the collective effort of governments, industries, and communities will be paramount in turning the tide against counterfeiting, ensuring a safer, more innovative, and competitive European Union.

Dreyfus Law Firm stands ready to guide and support stakeholders through these evolving challenges.

Dreyfus et associés has partnered with our network of Intellectual Property specialised lawyers.

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