Artificial Intelligence (AI) represents both an industrial and legal revolution. As a key driver of innovation in software development, it raises a fundamental question: can AI be legally protected as software under current law? Addressing this requires an examination of the applicable legal frameworks primarily copyright and patent law as well as complementary protections, in light of existing legislation, including the EU Regulation 2024/1689 on artificial intelligence, commonly known as the AI Act.

Copyright protection

Eligibility criteria

Under French law, software is protected by copyright pursuant to Article L.112-2 13° of the Intellectual Property Code (IPC). This protection extends to original programs defined as those bearing “the imprint of the author’s personality” (CJEU, C-5/08, Infopaq). Protection arises automatically upon creation, without formal registration, subject to proof of authorship.

Limitations of protection

Algorithms, computational methods, and mathematical models, as such, are excluded from copyright protection under Article L.611-10 IPC. Moreover, works generated autonomously by AI without human intervention currently cannot be considered rights holders due to the absence of legal personality.

Patent protection

Patentability criteria

According to Article L.611-10 IPC and Article 52 of the European Patent Convention (EPC), software “as such” is not patentable. However, an AI program that produces a further technical effect beyond its implementation on a computer may be patentable, provided it satisfies the criteria of novelty, inventive step, and industrial applicability. 

Specific considerations for generative AI

Generative AI systems (e.g., those producing images, code, or text) present particular challenges. They may be eligible for patent protection if they address a concrete technical problem (see EPO decision G 1/19). Purely abstract or algorithmic models remain excluded from patentability.

Other forms of protection

Trade secret

The French Law No. 2018-670 of 30 July 2018 on the Protection of Trade Secrets safeguards confidential information with economic value. This includes AI training datasets, model parameters, and proprietary architectures, provided reasonable protective measures are implemented (such as confidentiality agreements and access controls). 

Database protection

Under Article L.341-1 IPC, databases are protected by sui generis rights if their creation involved a substantial investment. This protection can extend to AI training databases. However, individual, non-original data elements remain outside the scope of protection.

Legal risks associated with the use of AI

Using AI in software development may entail risks including violations of open-source licenses, inadvertent reproduction of protected works, and infringements of moral rights. Generated code must be carefully reviewed to ensure it does not constitute unauthorized derivative works. Non-compliance with the AI Act’s provider obligations (Articles 16 to 29) may also result in civil and administrative liability.

Conclusion

The legal protection of AI as software relies on a combination of frameworks: copyright (requiring human authorship), patents (for technical innovations), trade secrets, and database rights. The AI Act regulates AI deployment without conferring legal rights upon the AI itself, placing responsibility on human operators. Therefore, protection fundamentally depends on the extent of human involvement in the creation and use of AI technologies.

FAQ

The increasing reliance on digital platforms has reinforced the critical role of access to online identification data in enforcing rights. Yet, this access remains deeply constrained by a fragmented legal framework, often subordinating victims’ rights to the anonymity of wrongdoers. In practice, victims of civil wrongs are deprived of effective recourse, while only serious criminal offenses may justify lifting anonymity.

I – Legal mechanisms to access identification data

Civil investigative measures under article 145 CPC

Victims may request data disclosure under Article 145 of the French Code of Civil Procedure before initiating legal action. This allows a judge to order disclosure measures to preserve or establish evidence, including the identity of pseudonymous online users. However, such access is fundamentally restricted by Article L. 34-1 of the French Postal and Electronic Communications Code (CPCE), which prohibits civil litigants from accessing connection data, such as IP addresses, outside the criminal sphere.

This limitation has de facto created a regime of civil impunity for online misconduct, even when the infringement is deliberate and documented, as in the case of identity theft or reputational harm.

Criminal measures and the threshold of serious crime

By contrast, the CPCE authorizes the retention and disclosure of identification data in the context of criminal proceedings. These include:

• Subscriber information,
• Account registration data,
• Payment-related information.

Yet access to connection logs (IP addresses and source ports) is conditional upon the existence of “serious criminal offenses,” as required by Article L. 34-1, II bis, 3° CPCE. This threshold creates interpretative uncertainties, as demonstrated by recent case law.

II – Typology of online anonymization strategies

Identifying offenders online involves varying degrees of complexity:

1. Use of real identity: Rare and easily traceable.
2. Pseudonym with real data: Requires platform cooperation.
3. Pseudonym with fake data: Necessitates IP address to cross-reference with ISP records.
4. Advanced anonymization (VPN, TOR): Identification becomes technically improbable without real-time surveillance or source port data.

The IP address is often the only viable path to traceability—yet it is precisely the element least accessible under civil jurisdiction.

III – Case law analysis: Meta vs. Telegram

In the case involving Meta (CA Paris, 10 Sept. 2024, n° 23/16504), the Court denied access to IP addresses based on the proportionality principle and the perceived minor gravity of the identity theft. Meta’s defense—claiming non-possession of certain data—further underscores the inadequacy of enforcement mechanisms, especially where platforms fail to collect or retain relevant information.

Conversely, in the Telegram case (TJ Paris, 12 Nov. 2024, n° 24/57625), the judge ordered disclosure of all relevant data, including IP addresses, in response to a blackmail attempt. The decision bypassed the gravity requirement, focusing instead on the necessity of the measure to halt ongoing criminal behavior.

These cases reveal a dangerous inconsistency in judicial interpretation, leading to legal unpredictability and selective access to justice.

IV – Legal uncertainty and the challenge of enforcement

While the LCEN (Law for Trust in the Digital Economy, Art. 6, V) imposes a mandatory data retention obligation on hosts and ISPs, the 2021 decree is interpreted by platforms like Meta as optional in nature. This legal ambiguity undermines enforcement and shifts the burden onto victims, who are forced to navigate Kafkaesque procedures.

Moreover, a victim cannot even obtain proof that their own stolen data is misused, as access to IP logs is categorically denied in most civil contexts.

Conclusion and strategic insights

Access to online identification data remains structurally unbalanced, favoring anonymity over redress, particularly for civil victims. The current framework, riddled with procedural thresholds and vague terminology, fails to uphold the fundamental right of access to justice. A legislative clarification is urgently needed, alongside a stricter enforcement of data collection duties by platforms.

Dreyfus Law Firm advises and represents clients in complex cross-border matters involving digital rights enforcement, online reputation, and intermediary liability.

Dreyfus Law Firm is partnered with a global network of Intellectual Property attorneys.

Nathalie Dreyfus

FAQ

In a context where each European generates nearly 190 kilograms of packaging waste annually, the EU has seen a steady increase in this waste, from 66 million tonnes in 2009 to 84 million tonnes in 2021. Packaging generated a turnover of 355 billion euros in 2018, highlighting both its economic importance and environmental impact.

On November 22, 2023, the European Parliament and the Council made a significant step in combating packaging waste by reaching a provisional agreement on a set of measures aimed at redefining the European packaging market.

On April 24, 2024, the Parliament adopted these new measures with 476 votes in favor, 129 against, and 24 abstentions. The deputies resisted intense lobbying to promote a more circular and sustainable economy.

This regulation is part of the European Green Deal, launched in 2019, which aims to make Europe the first carbon-neutral continent by 2050 and to reduce greenhouse gas emissions by 55% compared to 1990 levels by 2030, in line with the European climate law of June 2021 and the directive on single-use plastics.

Objectives of the New Regulation

With these measures covering the entire lifecycle of packaging, the Parliament’s objectives are clear: to meet citizens’ expectations to build a circular economy, avoid waste, phase out unsustainable packaging, and combat the use of single-use plastic packaging.

Among the key objectives, the EU commits to reducing the amount of packaging by 5% by 2030, 10% by 2035, and 15% by 2040, focusing on reducing plastic packaging. To achieve this, from 2030, the circulation of single-use packaging such as packaging for unprocessed fruits and vegetables will be banned, often criticized by the association Greenpeace under the hashtag #RidiculousPackaging.

In addition to the ban on unnecessary packaging, the new measures impose restrictions on the void ratio in packaging, prohibiting packaging that contains more than 50% empty space.

Furthermore, to protect consumer health, strict limits will be set regarding the use of perfluorinated and polyfluorinated alkyl substances (PFAS) in food packaging.

Promoting Recycling

From January 1, 2030, most packaging sold in the European Union must be recyclable and will be classified based on its recyclability level. It is planned that packaging must be made up of at least 10% recycled products. Additionally, a label will inform consumers about the contents of these packages.

To enhance the recycling of packaging, containers of plastic or metal beverages less than 3 liters must be collected separately with a deposit system. However, there is a significant exception for wine, spirits, milk, and dairy products.

Conclusion

Frédérique Ries, the rapporteur of the proposal, emphasized that for the first time, the EU sets packaging reduction targets regardless of the material used. The new rules encourage innovation and include exemptions for micro-enterprises while banning single-use chemicals in food packaging. This regulation is seen as a victory for the health of European consumers and calls for collaboration among all industrial sectors, EU member states, and consumers to combat excessive packaging.

The Council still needs to formally approve this agreement before it comes into effect. However, this legislation marks a further step towards achieving the EU’s environmental goals, incorporating citizens’ concerns for more sustainable resource management and reducing the environmental impacts of packaging. Dreyfus is committed to the environment to reduce our waste and optimize our energy consumption.

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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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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.

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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.

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In a landmark decision on February 28, 2024, the French Court of Cassation put an end to a legal battle that has captured the attention of the legal community since 2021, regarding the recognition of the database producer status of the well-known Leboncoin. This case, which progressed through various levels of the judiciary, is of paramount importance for understanding and applying the rights of database producers and the presumption of copyright ownership.

Background and Stake of the Case

The dispute began in 2021, when Leboncoin initiated legal proceedings against a competing company for database counterfeiting. This case is unique because Leboncoin, besides its main site, also manages a specialized real estate database and the site “avendrealouer.fr,” thereby reinforcing its status as a leader in the online classifieds market.

The Appeal Court had acknowledged that Leboncoin holds the presumption of copyright ownership over these databases, thus enabling it to request a counterfeiting seizure before even starting a trial. However, this seizure was time-limited and could not target activities that occurred before Leboncoin’s establishment.

The Significance of the Court of Cassation’s Decision

On February 28, 2024, the French Court of Cassation, definitively upholds the appeal decision, underlining several crucial points for the rights of database producers.

The Court’s decision unequivocally recognized the creation and active management of a database — including specialized ones like Leboncoin’s real estate platform — as grounds for granting an entity the status of database producer, along with all related rights.

This recognition carries with it a presumption of copyright ownership, which is instrumental in fortifying the legal defenses against database counterfeiting and unauthorized usage.

Thus, the ability for a database producer to request a counterfeiting seizure before any trial is a powerful tool in combating data piracy. However, the time limitation imposed by the appeal court serves as a reminder of the legal framework within which these measures can be applied.

Conclusion and Future Implications

The Leboncoin case highlights the complexity and importance of database protection in the digital era. The Court of Cassation’s decision reinforces the rights of database producers in France, thus offering enhanced protection against counterfeiting.

Moreover, the decision is a call to action for database holders, encouraging them to leverage their rights proactively to shield their digital creations from infringement and misuse. This judgment is bound to have repercussions on how intellectual property rights are perceived and enforced in the digital space, marking a turning point in French jurisprudence regarding database protection.

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

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In a breakthrough decision, the EUIPO’s Board of Appeal recently addressed the complex landscape of trademark protection, setting a precedent with its ruling on the opposition between “BIOTROP” and “BIOTRON.” This case has sparked significant discussion among intellectual property professionals, especially regarding trademarks with low distinctiveness in the health and technical sectors.

Background of the Case

On October 15, 2021, BIOTROP PARTICIPAÇÕES S.A. (BIOTROP) applied for trademark registration covering a range of chemicals and services across classes 1, 5 and 35, including fungicides, insecticides, fertilizers, and associated retail services. CIFO S.r.l., a competing entity, challenged this trademark application, arguing it could be confused with their existing EU and Italian trademarks ‘BIOTRON’.

Initially, the EUIPO’s Opposition Division ruled in favor of CIFO S.r.l., acknowledging the potential for confusion regarding goods in classes 1 and 5, and for most services in class 35. Unconvinced, BIOTROP appealed to the EUIPO’s Board of Appeal (BoA).

Unravelling the Board of Appeal’s Verdict: distinguishing factors in “BIOTROP vs. BIOTRON”

The Board’s decision (R1656/2023-2) to deny confusion between the two trademarks, despite their apparent similarity and the related nature of their goods and services, underscores the nuanced approach required in evaluating trademarks.

The Board based its decision on several factors, including the average similarity in goods due to their purpose, sales channels, and market competition, while only a low level of similarity was noted between the services in class 35 and the goods in class 1.

The Board also discussed the distinctiveness of the trademarks, noting that the common prefix ‘bio’ was non-distinctive for biological or organic products. However, the suffixes ‘tron’ and ‘trop’ were deemed distinctive due to their lack of meaning.

Furthermore, the Board assessed the visual, phonetic, and conceptual similarities between the two marks. Despite the first six letters being identical, the distinctive suffixes and the inclusion of a figurative element in BIOTROP’s application were enough to create a different overall impression, particularly to a discerning audience.

This decision suggests a potential narrowing in the scope of trademark protection, focusing it on cases of nearly identical reproductions and highlighting the importance of distinctiveness.

New uncertainties: a decision creating legal risks for prior trademarks owners

The apparent minimal visual and phonetic resemblance between the trademarks raises doubts. With six out of seven letters shared, arranged identically from the start, it is challenging to dismiss the potential for confusion. Citing the alphabet’s finite nature, the ‘BIO’ prefix’s descriptive quality, and the contested mark’s simplistic design hardly negates the risk of confusion. One might wonder, how closely must trademarks resemble one another before they are deemed to have a moderate to high level of similarity? Under such scrutiny, it appears that the protection afforded by the prior trademark is nearly restricted to cases where a new trademark replicates it entirely, without any distinguishing features.

For trademark owners, this decision is a source of legal uncertainty. An important similarity between the signs and the goods and services no longer seems sufficient to create a likelihood of confusion, if a relatively insignificant part of the trademark is deemed distinctive.

The decision encourages new right holders to ensure that their trade mark applications highlight unique, distinctive elements in order to satisfy the EUIPO’s requirements and secure the trademark’s future.

By examining cases such as “BIOTROP vs. BIOTRON”, we gain valuable insights into the EUIPO’s current perspective on trademark protection. In navigating these complex waters, Dreyfus Lawfirm, stands ready to offer its expertise and support in protecting your intellectual property rights.

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The contemporary art market faces a worrying increase in artistic fraud, encompassing both counterfeiting and forgery[1].

For instance, in the Spies-Ernst scandal[2], a painting sold as an original Max Ernst was later unveiled as a forgery by Wolfgang Beltracchi, crafted with materials that were not available in Ernst’s era.

This incident highlights the sophisticated techniques employed by modern forgers and the significant challenges faced by experts in authenticating artworks.  In response, the Conseil Supérieur de la Propriété Littéraire et Artistique’s (CSPLA – French Higher Council for Literary and Artistic Property)[3] report highlights the inadequacies within France’s existing legal statutes in combating these illegal practices, notably the 9 February 1895 law.

This scrutiny indicates a pressing need for an overhaul of the legal framework to enhance the safeguarding of artworks and their creators.

Current Legal Context

The Bardoux Law of 1895 stands as a foundational legal measure for combatting artistic fraud in France. Yet, its effectiveness is increasingly challenged by technological advancements and novel fraud techniques, including the exact replication of artworks. These activities, while not directly violating copyright laws, significantly compromise the integrity of the art market.

Proposals for reform:

• Towards the creation of an “artistic fraud” offence?

This report evaluates the bill adopted by the Senate on 16 March 2023, which aims to modernise the legal framework against artistic fraud. This reform proposal seeks to broaden the definition of “artistic fraud” to include all forms of illicit reproduction, increase criminal sanctions and create a more dissuasive repressive component.

Currently, the general laws in the Penal Code and the Consumer Code, covering fraud and deception, fall short in effectively combating art forgery. These laws lack specificity regarding art fraud, leading to legal ambiguity and a broad range of interpretations. This lack of clarity and the insufficient deterrent effect of existing penalties have made it easier for counterfeiters and their collaborators to evade serious repercussions. Consequently, the outcomes of legal actions against such individuals are often deemed inadequate, highlighting the need for more targeted and stringent measures.

• Civil liability of the perpetrator of artistic fraud?

The primary recommendation of the mission is to implement fines that are tailored to the financial capacity of the fraudster and the severity of the offense. Furthermore, it advocates for categorizing organized artistic fraud as a crime that warrants specialized criminal procedures. Additionally, the proposal suggests enabling specific associations to participate as civil parties in legal actions concerning these offenses, aiming to strengthen the enforcement and legal response to artistic fraud.

Civil law can also be useful against artistic counterfeiting, but it is limited to certain aspects of the dispute.

For instance, contract law permits the annulment of sales if the work’s nature has been misrepresented, addressing the aftermath rather than directly sanctioning counterfeiting. To enhance this approach, the Mission suggests adding a civil dimension to the existing criminal framework. This addition would enable victims of artistic fraud to seek compensation for their losses, thereby providing a more comprehensive remedy for those affected by such fraud.

It is recommended that a provision be added to the French “Heritage” Code ‘Code du patrimoine[4] stating that “any artistic fraud entails the civil liability of its author”, thus clearly establishing the possibility of civil proceedings for the cases described in article L. 112-28, provided that fraudulent intent is proven.

Adapting to new technologies

A key point of the report is to adapt legislation to the challenges posed by digital technologies. Advances in artificial intelligence and the proliferation of online platforms facilitate the proliferation of fakes, making them more difficult to detect and combat. The report proposes the inclusion of specific measures to address the impact of new technologies on the art market.

1. Artificial Intelligence (AI) Impact: the mission proposes a duty of transparency for AI applications in art creation, suggesting that regulations should mandate clear disclosure about the use of AI in both the creation and distribution phases of artworks.
2. Digital Networks: The mission recommends encouraging soft law norms for online platforms to cooperate with rights holders, including setting up reporting mechanisms for counterfeit art. It also suggests legal measures to enable judges to order preventive actions against the online dissemination of fraudulent art.
3. Non-Fungible Tokens (NFTs): The mission suggests applying existing laws to NFT-related art fraud while also recommending the development of certification mechanisms prior to NFT minting to enhance reliability and trust in digital art transactions.

These recommendations aim to adapt the legal framework to effectively counter the challenges posed by digital technologies in perpetuating art fraud.

Conclusion and outlook

The CSPLA report provides a solid basis for rethinking legislation in the light of technological developments and new forms of fraud. Implementing the recommendations would strengthen the effectiveness of protection and enforcement mechanisms and provide greater legal certainty for those involved in the art market.

Given the urgent need to reform the legal framework and protect the rights of creators, Dreyfus Law Firm stands ready to guide and support stakeholders through these evolving challenges.

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[2] https://ial.uk.com/the-spies-ernst-case-art-experts-in-france-can-breathe-a-sigh-of-relief/

[3] In France, the High Council of Literary and Artistic Property is an independent advisory body that advises the Minister of Culture and Communication on literary and artistic property. To read the report (in French) : https://www.culture.gouv.fr/Nous-connaitre/Organisation-du-ministere/Conseil-superieur-de-la-propriete-litteraire-et-artistique-CSPLA/Travaux-et-publications-du-CSPLA/Missions-du-CSPLA/Rapport-de-mission-sur-les-faux-artistiques

[4] For the purposes of this Code, heritage is understood to mean all property, whether immovable or movable, in public or private ownership, which is of historical, artistic, archaeological, aesthetic, scientific or technical interest.

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In a significant decision dated December 6, 2023 ([2023] EWCA Civ 1451 Case No: CA-2023-000692), the Court of Appeal of England and Wales has given a new interpretation of legal acceptance and reiterates the importance of monitoring trademark usage to avoid acquiescence.

Context: The Dual Use of the Acronym ICE

The case involved Industrial Cleaning Equipment, a British company, which sued Intelligent Cleaning Equipment Holdings, a Chinese manufacturer, for using the acronym ICE and several similar logos. Both companies had trademarks registered in the UK. The Claimant registered its logo in 2016, while the Defendant had international registrations dating back to 2015, which were recognized in the EU and subsequently in the UK following Brexit.

First instance Judgment

At first instance, the Claimant accused the Defendant of trademark infringement and passing off and the defense of statutory acquiescence was rejected by the judge.

But What is acquiescence? Acquiescence in trademark law is when a trademark holder tolerates unauthorized use of their trademark over an extended period, potentially leading to a loss of rights to challenge this use later.

In this case, it was accepted that the Claimant had knowledge of use of the Defendants’ UKTMs in the UK since around July 2014, but denied having any knowledge of registration of such marks until July 2019, when the Claimant’s solicitors sent the Defendants a letter before claim alleging trade mark infringement and passing off.

Proceedings were issued on 24 May 2021, and the judge at first instance found in favor of the Claimant. The judge held that the defense of statutory acquiescence raised by the Defendants under section 48 of the Trade Marks Act 1994 (TMA 1994), could not succeed because the five-year period only starts to run when the earlier trade mark owner has knowledge of both the use of the later trade mark, and of its registration.

The decision hinged on the EU Court of Justice’s ruling in the Budvar case (C-482/09 – Budějovický Budvar), which required knowledge of both the use and registration of the later trademark for acquiescence.

The Appeal and its groundbreaking decision

The Defendants appealed on two main grounds. Firstly, they argued that knowledge of the registration of the later trademark was unnecessary for acquiescence. Secondly, they claimed that the relevant date for calculating acquiescence should be the international registration date.

A New Interpretation of Acquiescence

The Court of Appeal conducted an in-depth analysis of the principle of statutory acquiescence, particularly referring to the Budvar decision and other EU case law.

It found that the Budvar decision was an isolated judgment and that EU courts, including the EUIPO Board of Appeal and the General Court, had interpreted the legislation differently. These interpretations focused on the requirement of a registered mark being used for five years, without necessitating knowledge of its registration.

Consequently, the Court of Appeal departed from Budvar, holding that statutory acquiescence only requires knowledge of the use of a later mark after its registration.

However, regarding the start date for calculating acquiescence, the Court sided with the Claimant, marking the date as either the acceptance by the EUIPO or the second republication date, not the WIPO registration date. Unfortunately for the Defendants, they were therefore still ultimately unsuccessful in their appeal.

The Court concluded that acquiescence only requires knowledge of the use of the later trademark after its registration, not knowledge of the registration itself.

Conclusion on the Importance of Monitoring Trademarks

This decision marks a significant shift in UK trademark law, realigning it with the broader trends in EU General Court and EUIPO case law. It underscores the importance for trademark owners to monitor not just the use but also the registration of marks that might infringe their rights. Regular checks on trademark registries are crucial to avoid unintentional acquiescence.

The ruling also highlights the nuanced distinction between use and registration in trademark law. For practitioners, this decision emphasizes the need for vigilance and proactive strategies in trademark monitoring and enforcement.

By clarifying the requirements for statutory acquiescence, it offers guidance and a renewed understanding for trademark practitioners and owners.

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In the realm of brand protection, a crucial inquiry is measuring the value or Return on Investment (ROI) of programs dedicated to monitoring and enforcement. This measurement is essential for two reasons: firstly, to justify the initial expenditure on the brand protection endeavor, and secondly, to assess its value after a certain period of implementation. Consequently, some have argued in favor of certain methodologies for calculating the ROI of brand protection initiatives. These typically include evaluating the cost associated with each active infringement and estimating the percentage of lost revenue potentially recoverable after an infringement is addressed.

However, these approaches and methodologies, are difficult to put into practice. Indeed, ROI methodologies seem to be more appropriate when it comes to counterfeiting rather than brand protection itself.

Therefore, Compliance, which focuses on what would be lost instead of what could be gained may be a more effective solution to evaluate risks and gains regarding brand protection.

1. Calculation of the ROI

Understanding ROI in Brand Protection

Return on investment calculations, in theory, would allow the brand owner to have an overview of costs, expenses and losses pertaining to the protection of his trademark.

Also, when it comes to e-commerce marketplaces, ROI can feasibly be calculated a posteriori, ie. post-enforcement.

Data-Driven Approaches for ROI Calculation:

This calculation is based on the total numbers and value of items removed via enforcement actions as well as data caps (ex : if a market place offers millions of a same infringing item, it probably suggests that they will manufacture them on demand, not that millions of items are sitting in a warehouse). This data can be scraped by most brand protection service providers.

Similar ideas can be used to carry out ROI calculations in other contexts where the data is available. Indeed, in case of takedowns regarding social medias, mobile apps or piracy, data such as the number of followers or likes, the number of downloads or of individual sharing a copyrighted content, can be used as proxies. The standard methodologies tend to use a ROI calculation in the form of :

ROI = C x E

C is some measure of « cost », ie. the revenue difference between an infringement being active and being removed ;

E is the number of enforcements

Challenges in Applying ROI Methodologies

Several factors would need to be taken into account regardless, such as variable substitution rates (the measure of the proportion of customers who will buy a legitimate item if the infringing item is made unavailable via a takedown action), and the consideration on the long-term impact as well as on brand valuation (visibility, customer loyalty).

On another hand, a priori calculations, i.e before any enforcement, offer much less visibility, if none at all, considering that this calculation is be based on assumed numbers instead of exact data.

Therefore, a ROI is more likely to be calculated on anti-counterfeiting efforts (seizure of products, recovery of damages…) rather than on the defense of a brand portfolio.

2.The solution of compliance

Cyber risk is ever-present and is one of the major challenges a company may face. Domain names are often vectors for fraud, enabling employees and consumers to be misled by the imitation of the company’s name or trademarks.

While monitoring tools can help identify fraudulent domain names early on, calculating the Return on Investment (ROI) becomes tricky, especially after acquiring these domains and redirecting their traffic to the brand owner’s official website. This redirection is done in the hope of converting some of the traffic into revenue for the brand owner.However, this approach is not exactly viable since the data (webtraffic, connections…) is very hard to quantify.

Moreover, this vision is not sustainable as it suggests that the brand owner will keep the recovered domain name and redirect it to an active website. Both are extremely unlikely as they would negatively affect not only the Search Engine Optimization of the brand, but also the reputation of the trademark.

As it happens, a domain name used for fraud is rarely redirected to an official site. This would discredit the official site and create confusion between what is official and what is not – a rather bad idea when acting to neutralize fraudulent domain names.

Proactive Compliance Measures

Therefore, preventive actions that follow the logic of compliance seem more suited to avoid losing brand value and money, such as :

• Conducting brand audits among domain names to assess risks.
• Implementing monitoring systems for domain names and social media.
• Preemptive registrations of domain names in at-risk extensions.
• Taking proactive actions against potentially harmful domain names.
• Establishing procedures and a crisis management unit for rapid response to infringements.
• Developing or updating the company’s domain name policy, ensuring internal and external dissemination.

Ultimately, the decision between focusing on ROI or compliance in brand protection strategies should be guided by the specific needs and context of the brand. A balanced approach that incorporates elements of both strategies could be the most effective path. Nevertheless, while applicable to anti-counterfeiting efforts, ROI methodologies offer less quantifiable insights and can be challenging to implement accurately. Compliance, on another hand, provides a broader, more preventive framework that safeguards brand integrity.

For expert guidance and tailored solutions in navigating these complex brand protection strategies, consider partnering with Dreyfus Law Firm, where our dedicated team specializes in offering comprehensive legal expertise to protect and enhance your brand’s value in the digital landscape.

In a noteworthy decision, AFNIC, the French country-code top-level domain name registrar, has transferred the rights of the domain name ‘porcelainefrancaisedelimoges.fr’ to the rightful owners of the French geographical indication (GI) ‘Porcelaine de Limoges’.

This ruling (decision FR-2023-03612) has profound implications for the protection of geographical indications in the digital realm.

Legal and factual Background of the case

The French government introduced a national system for the protection of GIs for craft and industrial products in 2014 (Law No. 2014-344 of March 17, 2014). This law led to a flurry of GI registrations, including the famed ‘Porcelaine de Limoges’. Producers of Limoges porcelain, with a rich history dating back to the 18th century, filed for GI registration on June 8, 2017, which was officially granted on December 1, 2017.

Simultaneously, an anonymous individual registered the domain name ‘porcelainefrancaisedelimoges.fr’ on February 24, 2017. This domain name, showcasing unrelated and possibly inappropriate content, prompted the Limoges porcelain producers to seek legal recourse.

The Dispute and legal proceedings

Asserting that the domain name infringed upon their rights, the claimants approached SYRELI, an alternative dispute resolution (ADR) system operated by AFNIC. The plaintiffs argued that the domain name registration was executed in bad faith, leveraging the pre-existing reputation and impending GI registration of ‘Porcelaine de Limoges’, widely covered by French media.

AFNIC’s Decision

AFNIC noted that the domain name closely resembled the registered GI, differing only in the addition of ‘French’. Consequently, AFNIC deemed the domain name as misappropriating and diluting the ‘Porcelaine de Limoges’ GI, leading to the transfer of the domain to the claimant.

Commentary and Implications

This case is remarkable for two reasons: the posteriority of the GI to the domain name registration and the basis of the dispute on a GI right.

The case raises significant questions about the applicability of ADR procedures when a GI is registered after a domain name. How should ADR panels weigh the reputation and recognition of a GI that was informally established but not legally registered at the time of domain name registration? Should the evidence of pre-registration reputation and intent to register the GI be considered sufficient grounds for transferring or revoking a domain name?

ADR panels might need to be equipped with more nuanced criteria for evaluating the ‘good faith’ intentions of domain name registrants, especially in cases where the registrant could reasonably have been aware of a well-known but yet-to-be-registered GI.

Secondly, domain name ADR systems in the EU and the UDPR system have not accommodated GIs, focusing mainly on trademark rights. However, France’s progressive posture in the protection of crafts and industrial products within domain names and has set a precedent. The Regulation (EU) 2023/2411now include provisions recognizing registered GIs in domain name disputes and explicitly protect GIs from cybersquatting.

This development is not just a technical adjustment in legal procedures; it reflects a broader shift in recognizing the value and significance of GIs in the global economy and digital world.

It recognized that a geographical indication, “Porcelaine de Limoges”, deserves the same level of protection as trademarks and company names in domain name disputes. This is a big deal and puts France at the forefront of internet protection, especially concerning intellectual property in the digital domain.

As legal practices continue to evolve, this case will serve as a critical reference for domain name and intellectual property law practitioners. Stay tuned!

In a significant ruling by the French Supreme Court on September 27, 2023, (Cour de cassation, ch. com., 27 septembre 2023, 22-10.777, Akiva SARL c. Gaiatrend SARL et M.), judges clarified the concept of disparagement in cases involving the sending of formal notices to retailers accused of trademark counterfeiting.

Background

The case revolved around a company specializing in the manufacturing and marketing of electronic cigarette liquids, which owned two European Union trademarks, namely FR-M. The company’s manager also held two EU trademarks, FR4 and FR-K. They initiated legal proceedings, alleging infringement, unfair competition, and parasitism, against a competitor producing electronic cigarette liquids labeled as “FS-M” and “FS-4.”

Disparagement Allegation

The defendant company argued before the Court of Appeal that the formal notices sent by the plaintiff company to their resellers constituted acts of disparagement. Their argument hinged on the absence of an explicit mention of an infringement action against their products. According to them, this omission discredited their products, thus constituting disparagement.

Court Decisions

Both the Court of Appeal and the Court of Cassation rejected the disparagement claim, even in the absence of explicit mention of an ongoing infringement action. The courts ruled that the purpose of these letters was to inform resellers about the infringing nature of the products, indirectly indicating the existence of an infringement action. The Court of Cassation affirmed that the plaintiff company had not intended to misrepresent the letter but had made a simple drafting error.

Strict Interpretation of Disparagement

The French Supreme Court’s decision highlights the strict interpretation of disparagement. The formal notices were not intended to damage the defendant company’s reputation. Instead, the plaintiff company aimed to inform resellers about the counterfeit products and put an end to the disturbance. Furthermore, the information in the letter was accurate and not misleading, ensuring that resellers understood the true purpose: to establish that the defendant’s products were counterfeit.

Conclusion

This legally sound and welcome decision reinforces the protection of trademark law. It underscores the importance of intent in disparagement claims and the need for clarity in communication. Trademark owners can take this ruling as a precedent to protect their intellectual property rights more effectively.

For comprehensive guidance and assistance on trademark-related matters, please contact our experienced legal team at Dreyfus Law Firm. We are here to help you navigate the complex landscape of intellectual property protection.

In the realm of intellectual property law, the protection of olfactory trademarks presents a unique challenge. Unlike traditional trademarks, which rely on visual representation, olfactory trademarks are based on scents, making them subjective and difficult to standardize. This complexity is vividly illustrated in the case of the German Patent Court’s decision in 29 W (pat) 515/21.

On September 3, 2020, a groundbreaking application was filed for a German trademark in class 28, covering “sports articles.” The application was unusual; it sought to register an “olfactory mark,” described as “the scent of honey from the nectar of common heather flowers (Calluna Vulgaris) on golf balls.” This application challenged the conventional boundaries of trademark law, venturing into the relatively uncharted territory of olfactory marks.

The German Patent and Trademark Office, however, found the application lacking. They rejected it on the grounds that the scent was not represented in a manner allowing authorities to determine its scope of protection precisely. This rejection brought to light the pivotal requirement of representability in trademark law, an aspect often taken for granted in more traditional applications.

The applicant’s appeal brought forth further insights. The German Patent Court maintained that for a mark to be registrable, it must meet stringent criteria: it should be clear, precise, complete, accessible, intelligible, durable, and objective. These criteria, known as Siekmann’s criteria, are now a cornerstone of the EU Trademark Regulation (EUTMR), specifically Article 3, paragraph 1. The applicant’s description, while creative, failed to meet these stringent standards.

Moreover, the Court pointed out that descriptors like “bitter,” “strong,” and “aromatic” are inherently subjective and do not provide the objective clarity required by law. The Court’s decision serves as a vital reference point for future applicants, illustrating the nuanced requirements of non-traditional trademark registrations.

Interestingly, the Court also discussed various unsuccessful methods of representing olfactory marks, such as chemical formulas and color codes used in the perfume industry. These methods, while innovative, fell short of the legal standards for clarity and objectivity.

This case exemplifies the gap between current legal frameworks and technological advancements. The EU’s trademark reforms theoretically allow for the protection of olfactory marks, yet the technology to represent scents precisely and objectively is still evolving. This scenario presents an intriguing paradox where the law, typically seen as reactive, is ahead of technological capabilities.

The future, however, holds promise. With digital scent technology progressing rapidly, there is hope that reliable odor reproduction could soon make olfactory trademarks a practical reality. This advancement would mark a significant leap in intellectual property law, opening new frontiers for trademark protection.

At Dreyfus Lawfirm we stay at the forefront of these developments, ensuring our clients are well-equipped to navigate the complex landscape of trademark law, whether traditional or cutting-edge. In a world where legal precedents and technological innovations constantly redefine the boundaries, our expertise becomes your asset in safeguarding your intellectual property rights.

In an information notice (information notice No. 26/2023), WIPO has announced a number of amendments to the Regulations under the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks.

These amendments, which have been in force since 1 November 2023, provide clarity for right holders and their representatives.

1. Indication of the start and end date of the period for replying to a provisional refusal

Although an international trademark is registered through a one-stop shop, once the international phase has been completed, the application is forwarded to the offices of the designated countries for examination in accordance with their national legislation. It is during this examination that any objections or provisional refusals are issued.

Until recently, the deadlines for responding to provisional refusals could lead to confusion, as many national or regional offices did not indicate either the deadline for responding or the dates on which said deadline was calculated.

To overcome this issue, national or regional trademark offices will now be required, when issuing a provisional refusal, to indicate the deadline for response, as well as the start and end dates of the deadline, unless the time limit starts to run on the date on which WIPO transmits the provisional refusal to the holder. In this case, it will be up to WIPO to indicate the start and end dates of the period in its notification.

As a security measure, in the rare event that an electronic communication does not reach the intended recipient (due to a faulty e-mail address or a full inbox, for example), WIPO will also send a copy of the notification of provisional refusal by post.

2. Introduction of a minimum time limit for responding to provisional refusals

Until recently, WIPO did not impose any minimum time limit for examining and responding to provisional refusals. These deadlines, determined by the national/regional intellectual property offices, ranged from 15 days to 15 months.

Sometimes very brief, they were therefore a real source of difficulties for trademark right holders and their representatives.

To alleviate this problem, a minimum period of two months (or 60 consecutive or calendar days) is now allowed for filing a request for review, an appeal or a response to a provisional refusal.

In addition to this minimum two-month period, WIPO will calculate and communicate to right holders a specific date for responding to provisional refusals.

While the initial deadline for compliance with this new requirement is February 1st, 2025, Contracting Parties that require additional time, especially to adjust their legal framework, can choose to further postpone the implementation of this obligation.

Conclusion

These changes, which industrial property law practitioners have been advocating for several years, are to be greeted with applause.

A positive development, which shows that WIPO is listening to the voice of its users.

Recently alerted by the cruel practices endured by crocodiles during their slaughter for the production of the famous Birkin bags from the Hermès fashion house, the singer Jane Birkin informed Hermès about her intention to rename the crocodile-skin handbag bearing her name. The singer no longer wishes her name to be associated with such practices.

The Birkin bag, created in the early 1980s following a meeting between the singer and Jean-Louis Dumas, the chief executive of Hermès at that time is, however, one of the leading bags from the Hermès fashion house since its inception date.

Alongside arousing the curiosity of fans of the luxury brand Hermès, this news has also piqued the interest of lawyers. Indeed, in the face of such news, the question that arises is whether Jane Birkin can legally rename the crocodile-skin bag.

The fact of renaming a designer bag bearing the name of a star is not an isolated practice since there is a myriad of bags bearing the name of their muse. To cite only the most famous, it is noteworthy to mention the following designer handbags namely: So Kelly from Hermès as a tribute to Grace Kelly, Jackie from Gucci, Lady Dior, or B. Bardot from Lancel.

Since these names are associated with handbags, i.e. with goods, they were obviously registered as trademarks. This is the case, for example, for the name Birkin, filed and registered both as a French and international trademark by HERMES INTERNATIONAL since 1997 and the “So Kelly”, filed in 2009. The same holds true for the “Jackie” handbag, which refers to Jackie Kennedy and was filed by the Italian company GUCCIO GUCCI in 2008.

The practice of registering a surname as a trademark has been upheld by legislation and the French courts for a long time.

The surname is a personality right which is inalienable and indefeasible. Yet Article L.711-1, paragraph 2 a) of the French Intellectual Property Code provides that surnames can be registered as a trademark. Moreover, since the 1985 case of Bordas (Cass. Com. March 12, 1985, No. 84-17163), it is settled law that there can be an agreement to the effect of the commercial use of a surname.

Subsequently, the cour de cassation specified the conditions under which a surname could be registered as a trademark. In a judgment datedMay 6, 2003 (Cass. Com. No. 00-18192) the cour de cassation held that a founding partner who has agreed to the inclusion of his name in the company name must also expressly waive his ownership rights and allow the company to register the said surname as a trademark. In other words, the use of the surname of a third party is limited to what has been expressly authorized by the name holder.

Thereafter, the cour de cassation intervened in the Inès de la Fressange case regarding the use of her surname as a trademark by the fashion company bearing her name. After being dismissed from the company, the fashion designer had sought to recover the rights affiliated with her name by invoking the potentially misleading nature of the trademark on the basis of Article L. 714-6 b) of the Intellectual Property Code. She claimed that consumers would be misled into believing that they were buying clothes designed by her. But this was not the stance taken by the cour de cassation which, on the basis of Article 1628 of the Civil Code and the implied warranty against eviction principle, dismissed the designer’s claim (Cass. Com. January 31, 2006, N ° 05-10116).

A few months later, the Court of Justice of the European Union also faced a similar question in the Elizabeth Emanuel case (ECJ March 30, 2006. Aff . C-259 /04. Elizabeth Florence Emanuel v Continental Shelf). The issue in that case concerned the sale by the designer Elizabeth Emanuelof her fashion company bearing her name and the assets attached thereto, including the ELIZABETH EMANUEL trademark. However, following the sale, the fashion designer filed a claim for the revocation of rights against the trademark which was transferred accordingly, deeming that, just as was the case with Madame de la Fressange, the public was confused since she was no longer the designer of the clothes marketed under the trademark.

The Court held that the ELIZABETH EMANUEL trademark was not, in itself, likely to mislead the public as to the origin of the clothes. But the Court opined that it is for the national court to verify whether there is, on behalf of the company holding the trademark, an intention to make the consumer believe that the designer is still involved in the design of clothes. This would thus be tantamount to fraudulent tactics likely to make the company liable.

In the present case, since Jane Birkin is not associated with the design of the handbag, she cannot rely on this approach for the crocodile-skin handbag to be renamed.

It therefore remains to be seen whether the intention to rename the Birkin crocodile-skin handbag can materialize to the extent that the surname of the singer, registered as a trademark, could be considered as part of the assets of the Hermès company. The outcome of this case shall enlighten us.

Furthermore, on 11 September last, the saddler welcomed in a press release that Jane Birkin seemed to be satisfied by the measures adopted by the Hermès house following the controversy appeared this summer.