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Validity of three-dimensional trademarks: Tic-Tac does not crack.

Written by Dreyfus11/07/2022

three-dimensional trademarks: Tic-Tac A three-dimensional trademark, featuring the shape or packaging of a product is valid, provided that this shape is not exclusively technical or practical in nature. Otherwise the shape would be necessary and therefore not protectable. This principle stands out in a decision of the Court of Appeal of Paris dated 15 February 2022.

FERRERO, which has been manufacturing and distributing TIC-TAC candies since 1971, is the owner of an international three-dimensional trademark designating France and two French three-dimensional trademarks. The company contested the participation of the Polish company BMB at the international food trade fair in Paris, and had a seizure carried out on a candy box similar to the famous TIC-TAC box. By deed dated 16 November 2016, FERRERO summoned BMB before the Paris TGI (High Court of First Instance) for trademark infringement and unfair and parasitic competition.

 

 

The court upheld these claims in a judgment dated 7 June 2019, and BMB appealed the decision. The Court of Appeal reaffirmed the validity of the three-dimensional mark, and concluded that the appellant’s goods constituted acts of infringement and unfair competition.

 

1. The affirmation of the validity of the three-dimensional trademark as a purely aesthetic object  

 

The court referred to the previous 1964 French law on trademarks and to Article L.711-2 of the French Intellectual Property Code, according to which the distinctive shape of the product or its packaging is considered a trademark, provided that this sign does not consist exclusively of the necessary or generic designation of the product or service.

To recall, the appellant used the presence of a lid to demonstrate that this mark consisted exclusively of the necessary designation of the product. It claimed that the opening and closing system was evident in the trade mark application and that the FERRERO companies had always presented the sign as having a flap lid and highlighted the existence of this element in their advertisements. In support of its claim, it added that the trade mark merely incorporated the patented solution, and that the three FERRERO patents demonstrated the technical and functional nature of each of the elements of the registered sign. The defendant retorted that the trade mark was a purely aesthetic object and form, and did not in itself show any technical result or form necessarily imposed by the function or nature of the goods designated.

The Court ruled in favour of the defendant, stating that, although the box as filed showed a recessed part in its upper part, the system for opening or closing the box was not apparent and this recessed part did not show any technical or functional result, regardless of the fact that the FERRERO companies had communicated the opening of a box of candies in their advertising, the validity of the trademark having to be assessed solely on the basis of the representation filed. As for the French trademarks whose shape associates the above-mentioned box with the small coloured oval sweets it contains, these are distinctive, thanks to a study revealing that a picture showing these small sweets was spontaneously attributed to the TIC TAC trademark by 70% of the 1073 people questioned.

 

2. A reminder on the assessment of the risk of confusion

The Court invoked Article L.713-3 b) of the French Intellectual Property Code in its old version. It recalled that the likelihood of confusion must be assessed by reference to the trademark registration, and that only the conditions of use of the contested sign and the marketing of the allegedly infringing goods must be taken into account, in respect of which the perception of the relevant public will be examined by reference to the sign and the goods and services referred to in the application.

This risk must also be analysed globally with regard to all relevant factors, and in particular the reputation of the mark. The overall assessment of the similarity of the trademark and the sign at stake must also be based on the overall impression they produce with regard to their distinctive and dominant elements.

The Court found that the comparison between the three-dimensional marks of FERRERO and the boxes presented by BMB shows significant similarities and that the visual differences do not alter the visual impression given by the signs in conflict and are not immediately apparent to the consumer concerned. Thus, the contested products appear to be imitations of the FERRERO marks, which generate a risk of confusion in the mind of the consumer who may confuse or associate the signs and consider that BMB’s products are a variation of the candy boxes covered by the FERRERO trademarks.

 

3. Clarification of the differences in the assessment of unfair competition and free riding

 

The court recalls that unfair competition and free-riding based on Article 1240 of the French Civil Code are identified by applying two distinct criteria. Indeed, unfair competition is based on the risk of confusion, a consideration that is foreign to free riding, which requires the circumstance that, for profit and in an unjustified manner, a person copies another person’s economic value which is the result of intellectual work and investment.

From these statements, it asserts that Ferrero, the French distributor of TIC TAC products, is entitled to argue that the acts of infringement committed to the detriment of the Italian company Ferrero, the owner of the counterfeit three-dimensional trademarks, constitute separate acts of unfair competition against it. They have in fact led to a risk of confusion between the products presented by the company and the TIC TAC products. Separate acts of parasitism also result from the fact that BMB unduly sought to take advantage of the strong recognition of the TIC TAC products by the French public

This review of the strict conditions for establishing the validity of a three-dimensional trademark based on its characteristics at the date of filing, as well as the practical consequences that a trademark can draw from them, is welcome news for companies wishing to benefit from the strategic perspectives offered by the filing of such a trademark.

 

SEE ALSO…

 

♦ How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

♦ Online Trademark Protection

 

Read More

Family of trademarks and summary proceedings: from opportunism to trap?

Written by Dreyfus08/06/2022

Famille de marques et procédure en référé : de l’opportunisme au piège ?Don’t be fooled, although the argument of the family of trademarks can certainly be used to avoid the cancellation of a trademark for non-use, it can also work against you. This is partly the lesson taught by a decision rendered on December 17, 2021 by the Paris Court of Appeal (Paris Court of Appeal, Pôle 5, ch. 2, n° RG 20/17286), judging a summary judgment on appeal.

This decision also provided an opportunity to clarify a crucial and not uncommon point of law: the licensee’s standing to sue for infringement in the event of a referral to the interim relief judge.

 

Facts and procedure. – The first applicant, a natural person named Soraya, is the owner of the European Union word trademark SORAYA covering a swimwear and beachwear creation and distribution activity. She is also the owner of French and European Union semi-figurative trademarks composed of the name SORAYA.

 

These trademarks are exploited through a company, the second applicant, of which the owner of the trademarks is herself the manager and sole partner. The summary proceedings were brought on behalf of both the operating company and the trademark owner. A contract conferring an exclusive concession was previously concluded between the trademark owner and the company.

After becoming aware of the existence of a company called Soraya Beachwear Ltd. located in Switzerland, the licensee applied to the interim relief judge to obtain a temporary restraining order against it. The latter company operates a website selling swimwear and beachwear on line <sorayabeachwear.com>, as well as an Instagram account related to this site. Also named Soraya, the founder of the challenged company chose to use her first name to designate her collections.

Following the dismissal of their claims, the applicants appealed the summary judgment order.

Admissibility of the licensee to act in summary proceedings alongside the owner. – One of the contributions of this judgment is the interpretation made by the Paris Court of Appeal of Articles L. 716-4-2 of the Intellectual Property Code and 25 4° of the EU Regulation 2017/1001, relating to the standing of a licensee.

Under French law, there are cases in which a licensee may bring a “civil action for infringement”, notably with the consent of the owner or as a beneficiary of an exclusive right of use, provided the owner has not taken the initiative to act within a reasonable period of time after formal notice.

In any event, the Intellectual Property Code and the above-mentioned European regulation both provide that a licensee is entitled to intervene in the infringement proceedings brought by the holder of the IP rights.

There is no doubt in this case that the operating company must be considered as the beneficiary of an exclusive right of use on the invoked European Union word trademark since the exclusive trademark license, submitted to the debate, bestows on the company the status of licensee.

However, it was not a question relating to the intervention the company in the proceedings, but rather of an action being brought jointly by the company and the trademark owner. There seemed to be a confusion between the filing of a joint action, which requires the consent of the owner when the licensee initiates the action, on the one hand, and the intervention of a third party in proceedings initiated by another party, on the other hand. Indeed, it is expressly mentioned that the company “acted in summary proceedings jointly” with the trademark owner before the President of the judicial court. In bringing this action, the licensee seeks to obtain “compensation for the damage that it has suffered”, as provided for in the law rules relating to the intervention of the licensee.

One of the decision’s highlights is the fact that the license agreement was not registered, which is a condition for its enforceability against third parties. It was however ruled that the lack of publicity of the agreement did not hinder the licensee status acquired by virtue of a validly concluded agreement.

The appeal decision therefore deemed admissible the applicants’ action and reversed the interim order on this count.

It should be noted, however, that in the case of a ‘simple’ licensee (who enjoys a non-exclusive license), the solution held by judges not the same. Indeed, under the terms of a previous decision (TGI Paris, ord. ref, July 21, 2011, No. 11/55158, Sté Lyl c/ Michel Attali), the summary proceedings judge stated the inadmissibility to act of the simple licensee: “only a person with standing to bring an infringement action may refer the matter to the summary proceedings judge in accordance with the provisions of Article L. 716-6 (…), this is not the case of the non-exclusive licensee who is only admissible to intervene in an infringement proceeding initiated by another party in order to obtain compensation for the damage that is specific to him, by application of article L. 716-5 of the Intellectual Property Code”.

In addition to verifying standing, the summary judgment judge, when not confronted with a manifest nullity of the title invoked, limits itself to assessing the existence or imminence of an infringement of the petitioners’ rights.

Lack of use of the invoked trademark. – The procedure to be followed by the interim relief judge was specified in a decision of June 28, 2011 (TGI Paris, ord. ref, June 28, 2011): “The interim relief judge must therefore rule on the challenges raised before him to oppose the measures requested, and these challenges may concern the validity of the title itself ; It is then up to the judge to assess the seriousness or otherwise of the challenge and to evaluate the proportion that exists between the challenge made by the defendants and the imminent infringement alleged by the plaintiffs and to decide, in view of the risks incurred on both sides, whether or not to prohibit the marketing of the products, to order their withdrawal and to award an advance”.

In this case, the infringement of the applicants’ rights could seemingly be characterized by the use of the identical name SORAYA to cover strictly identical products and services, namely swimwear and beachwear, as well as the related commercial services.

The applicants, in order to claim infringement, relied solely on one of their trademarks: a European Union word trademark composed exclusively of the first name SORAYA. However, in order to be successful in the proceedings, the applicants had to be able to demonstrate genuine use of the trademark in question.

As a reminder, a trademark is subject to genuine use if, within a continuous period of 5 years, it is be used in accordance with its essential function, which is to guarantee the origin of the goods and services for which it is duly registered (Regulation (EU) 2017/1001 of 14-6-2017 art. 58, 1-a).

The applicants, in communicating the evidence intended to demonstrate the serious use of the trademark, seemed to rely on a certain reputation, which they did not explicitly argue. Instead, they testified to a simple “well-known use” of the trademark, induced in part by their long-standing partnership with the Miss France election. However, the argument that did not work in their favor was that “the exploitation of the derived trademarks that were the subject of subsequent registrations did not in any way diminish the use of the historical trademark SORAYA. In addition, in order to justify the serious use of the trademark, the applicants communicated documents with a certain date, but for the complex SORAYA signs and not for the SORAYA word trademark. Moreover, among the plethora of documents submitted in support of genuine use of the trademark, several of them did not have a definite date, which makes it impossible to determine whether the trademark was actually used during the five-year reference period for which genuine use must be proven. However, this period was not communicated by the opposing party’s appeal. Therefore, in this respect, the first instance court judges referred to the period specified in the last pleadings addressed to the summary proceedings judge.

With respect to the various trademarks derived from the trademark in question, which are mostly semi-figurative trademarks, the judges will consider them as a family of trademarks.

This qualification of family of trademarks must be retained, according to consistent caselaw, for trademarks commonly held by one and the same owner and including the same distinctive element. Although the contours of this concept are insufficiently understood, it should allow a trademark owner and operator to avoid the sanction of cancellation for failure to use a trademark, whether registered or not.

A recent decision rendered by the European Union Court of First Instance (EUTA) testified to the appropriateness of this concept in relation to several trademarks containing the element “Mc”/”Mac” and owned by the American company McDonald’s. In 2016, McDonald’s won the case by asserting the following 12 trademarks in the European Union: McDONALD’S, McFISH, McTOAST, McMUFFIN, McRIB, McFLURRY, McNUGGETS, McCHICKEN, EGG McMUFFIN, McFEAST, BIG MAC, PITAMAC. The qualification of “family of trademarks” was thus retained to cancel a “MacCoffe” trademark.

Nevertheless, what is worth remembering following the SORAYA decision is that the first instance court judges will consider that the use of a family of trademarks cannot be successfully invoked “when the aim is to establish the use of a sufficient number of trademarks of the same “family””.  In this sense, the use of one trademark cannot be invoked to justify the use of another trademark. In other words, the fact that the applicants used the semi-figurative trademarks independently, which are also different from the EU word trademark, does not allow them to rely on the concept of use of a family of trademarks.

 

Practical considerations from the decision:

– The exclusive licensee, together with the owner of the trademark, is entitled to bring an action in summary proceedings for the prosecution of alleged infringements;

– The licensee has standing to act even if the contract under which he derives his rights has not been subjected to publicity formalities;

– The assessment of the genuine use of a European Union trademark is carried out with regard to a reference period of 5 years, which is in principle specified by the party claiming the lack of such use, both in the writings addressed to the judge of the summary proceedings and to the Court of Appeal;

– The use of a substantial number of trademarks derived from the invoked trademark, and presumably constituting a series/family of trademarks, does not necessarily prove a substantial use that will defeat the legitimate use of similar trademarks.

 

SEE also…

 

♦The Specsavers vs Asda saga: Genuine use of trademarks

♦The masked licensee or the enforceability of the license of a non-enrolled European Union trademark

Read More

Legal Watch: UDRP Proceedings: Legitimate Interest of the Respondent

Written by Dreyfus03/06/2022

The legitimate interest of the respondent justified by the use of his trademark in connection with the services for which it is registered.

 

A respondent’s legitimate interest in UDRP proceedings is likely to be acknowledged when its registered domain names reproduce its trademark and said trademark is used for the services it covers, even though the trademark was registered subsequently to the domain name registrations. It is therefore essential for the complainant to prove in great detail that the defendant has sought to infringe its IP rights.

On 27 September 2021, Easy Online Solutions filed a UDRP complaint seeking the transfer of the domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com> and <cloudmojotech.website>, which were registered on varying dates between 8 May 2020 and 12 February 2021 by Cloudmojo Tech LLP.

 

 

The applicant is a US-based company specializing in the provision of web hosting, content distribution and other “software as a service (SaaS)” services. It owns four word trademarks registered in the United States between the years of 2012 and 2019 for services in class 42 relating to the signs ‘MOJOHOST’, ‘THAT’S GOOD MOJO’, ‘MOJOCDN’ and ‘MOJOCLOUD’. In addition, it has been using the domain name <mojohost.com> since 2002, and has also reserved the domain name <mojocloud.com> which redirects to the website www.mojohost.com.

Cloudmojo Tech LLP, established in June 2020 in Mumbai, India, specializes in the resale and distribution of Microsoft products and has reserved the disputed domain names in the course of its business. Furthermore, prior to the start of the proceedings in June 2022, the defendant filed the word trademark “CLOUDMOJO TECH” in India for services in Class 42, and notably for “computer programming”, “technology consulting” and “SaaS services”. Said trademark was registered on 9 December 2021.

The Panel acknowledges that there is a likelihood of confusion between the disputed domain names and the trademark “MOJOCLOUD” insofar as they consist of the same verbal elements, “MOJO” and “CLOUD”, although the terms are reversed.

In terms of the respondent’s rights or his legitimate interest, the Panel raised several points.

Firstly, the respondent is active in the IT industry, although on a relatively average scale.

Secondly, the domain names are very similar to the respondent’s corporate name. However, the respondent assumed the name only after the first three domain name registrations, i.e. a few weeks later.

The respondent argues that he was not aware of the complainant’s company, nor of its trademarks, at the time of the reservation of the disputed domain names (or at least of the first three domain names).

In fact, it must be noted that the term “cloud” is rather descriptive of the services concerned. In addition, although the term “mojo” is not descriptive of the services concerned, it is still a generic term. Thus, it is plausible that the respondent chose the term “mojo” without having been aware of the complainant’s trademarks.

This hypothesis is supported by the fact that the applicant’s marks do not seem to be known throughout the world. The Panel notes that the applicant has servers in the USA and the Netherlands. He has also been using the trademark “MOJOHOST” in the United States for numerous years. “MojoCloud” is the name used for a service offered on its website www.mojohost.com. Therefore, the claim that its trademarks have a substantial international reputation is not proven. The claimant provides no evidence of sales revenue, advertising expenditure, or of the volume of traffic generated by the www.mojohost.com website and by the redirection of www.mojocloud.com to www.mojohost.com.

In addition, the respondent has registered the trademark ‘CLOUDMOJO TECH’ in India, which is used for the relevant services. The applicant was aware of this registration application . However, no action was taken to oppose it. From this inaction it can be inferred that the applicant has no business in India. The Panel notes that although the applicant’s website is accessible from India, it has not demonstrated any activity in that territory.

In view of these elements, the complaint is rejected.

The decision is not surprising in that it is customary for a company to reflect its corporate name in a domain name, especially since the use of the respondent’s trademark is correlated with the services for which it is registered.

As such, it was essential for the complainant to prove the use of its marks in India but also to provide further evidence of its alleged international reputation. In view of the defendant’s corporate name, which was only revealed after the complaint was filed, a strong India-centered case was essential to have a chance of obtaining the transfer of the names.

 

(WIPO, Arbitration and Mediation Center, Case No. D2021-3197, 3 January 2022, Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd)

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Womens IP World Podcast

Written by Dreyfus31/05/2022

We are pleased to present the “Women’s IP World Podcast” in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Michele Katz, founder and CEO of Advitam IP, LLC.

“Gender washing & Greenwashing: Mother Nature, emblem of the instrumentalisation of societal and environmental struggles by tomorrow’s enterpreneurship?”

 

If you want to know more about intellectual property issues and discover a rich and experienced vision on the subject, you can also read the article  Nathalie Dreyfus wrote for “Women’s IP world Annual”.

 

 

 

 

ABOUT THIS TOPIC…

 

♦Online Trademark Protection

 

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International Designs: China joins the Hague Agreement and WIPO

Written by Dreyfus16/05/2022

In a major development for the global Intellectual Property ecosystem, China joined the Hague System for the International Registration of Industrial Designs on 5 February 2022. This accession will enter into force on 5 May 2022. Following Belarus and Jamaica, the world’s second largest economy has just joined this Union which aims to facilitate the international registration of designs.

 

 

Joining a system to facilitate access to design protection

 

The Hague System was set up to facilitate the protection of industrial designs internationally, through a simplified filing system with a single office: The World Intellectual Property Organization (WIPO). Currently, 76 contracting parties are members of the system, bringing together 93 countries, including France, the European Union, the US, but also many countries in Africa, Asia and Eastern Europe. Given the importance of the appearance of a product, many countries have ratified the Hague Agreement in recent years. China has become the 77th contracting party to the Agreement.

Registering designs with WIPO allows them to be protected in the chosen countries – provided they have actually joined the Hague system – by paying a fee for each requested country. It is therefore not, strictly speaking, an international protection, as each title remains valid only in the concerned territory. Similarly, all acts relating to the protection of the design (registration, renewal) will be carried out in a single procedure.

 

 

The consequences of such accession

 

From now on, all Chinese designers will be able to benefit from the international design system. It is faster and less costly, and limits formalities by providing for a single filing covering up to 100 designs. As for foreign designers, they will have an easier access to the Chinese market, the world’s largest design application market. In 2020, the Chinese Intellectual Property Office received applications containing some 770,362 designs, which represents about 55% of global design applications. By comparison, there were “only” 113,196 EUIPO design filings.

However, the sole registration of a design with WIPO does not guarantee its protection in all the countries requested. WIPO then notifies the offices of all the designated States for an examination specific to each legislation. It is therefore necessary to pay particular attention to the conditions for protection. For example, in France: novelty, specific character and visibility of the design!

In order to file an application for design protection, French legislation provides for a grace period of 12 months following the first disclosure of the design. China, on the other hand, requires absolute novelty. It will therefore be necessary to pay attention to the specific protection conditions in certain countries in order to optimize the protection of a design internationally.

 

China’s accession to the Hague Agreement is therefore a real step forward in the homogenization of design registration. China has thus become the 77th contracting party to the Hague Agreement and gives hope that other highly innovative States will soon join in.

 

 

See also…

♦International designs: why has Belarus ratified the Hague Agreement?

♦International designs: South Korea ratifies the Hague Agreement

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Trademark Modernization Act

Written by Dreyfus20/04/2022

Drapeau USTrademark Modernization Act: new fast and efficient procedures to challenge non-used U.S. registered trademarks.

The United States Trademark system is based on use. This means that U.S. trademark holders are required to use their trademarks in relation to the goods and services designated in the trademark registration.

Contrary to the EU Trademark system, this use requirement applies both before and after the registration of U.S. trademarks. The U.S. system requires trademarks to be used before their actual filing. As regards foreign trademark registrations, an intent to use the trademark in the U.S is required.

The U.S. system traditionally provides two cancellation procedures to challenge non-used trademarks: the cancellation procedure based on ‘abandonment’ and the cancellation procedure based on ‘non-use’. While the former procedure requires a lack of use and a lack of intent to re-use it, the latter requires an asserted non-use within 5 years of its registration.

 

These two cancellation procedures still apply today.

However, the problem is that they are relatively expensive, time-consuming and not necessarily effective. For trademark holders, it is fairly easy to win these procedures as they simply need to show their intention to start or to resume the use of their trademarks.

Nonetheless, the Trademark Modernization Act changed this system.

 

The Trademark Modernization Act came into effect on December 18, 2020 and has an important impact on U.S. trademark owners and future applicants. It regards both national (U.S.) trademarks and international registered trademarks designating the United States.

This act adds two new procedures regarding non-used U.S. trademarks.

 

Expungement petition

A first important new procedure is the so-called ex parte expungement petition.

What?

The ex parte expungement petition is a new and relatively simple procedure to cancel U.S. registered trademarks for lack of use. It regards national and international trademarks (designating the U.S.) that have never been used in the U.S. in commerce and/or in connection with the goods and/or services after their registration.

The petition can be filed by anyone – contrary to traditional cancellation proceedings – and does not require a lack of intent to resume use.

When?

Until February 27, 2023, the petition can be filed against any non-used U.S. trademark that is older than 3 years.

After this date, the expungement petition will only be opened within 3 to 10 years after the registration of the non-used trademark in question.

Consequence?

The trademark holder has three months following the action to provide proof of use. The burden of proof, which is strictly interpreted, is thus put entirely on the latter. In case of insufficient proof of use, the trademark registration will be partly/fully cancelled.

 

Reexamination petition

A second important new procedure is the so-called ex parte reexamination petition.

What?

This procedure makes it possible to obtain a reexamination of trademarks registered via a national or international trademark filing (designating the U.S.) that have not been used in commerce or in connection with goods and services on a certain date. This petition can also be filed by anyone.

When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.

When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

When?

The reexamination petition can only be filed within 5 years of the registration of the trademark.

Consequence?

The trademark holder will need to provide sufficient proof of use for all of the challenged goods and services. Should the trademark holder fail to do so, the trademark registration would risk cancellation.

 

(Dis)advantages?

Firstly, these new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently. Contrary to the traditional cancellation procedure, these new procedures do not require the element of abandonment. It only requires non-use. The fact that a trademark holder has the intent to resume use is irrelevant in this regard.

Secondly, this new procedure makes it easier to get rid of ‘dead wood’ (non-used trademarks), and consequently, to register (non-used) trademarks faster and cheaper. Before the Trademark Modernization Act, it was generally burdensome to apply for a trademark registration when an older similar/identical non-used trademark prevented the application. In this context, cancellation procedures could take several years and bring forth substantial costs.

Thanks to the new expungement and reexamination procedures, it is more flexible and less time-consuming (it doesn’t require briefs, motions, etc.) to act against non-used trademarks and to try to register a non-used trademark yourself at a later stage.

Moreover, the new procedures require U.S. trademark holders to be (more) careful. They need to really use their trademarks and they should constantly keep evidence to prove, when needed, the actual use of trademarks in the U.S., in relation to goods and services, before and after the registration. The less evidence of use, the higher the risk of losing a U.S. trademark, and the easier it becomes for competitors to register similar and even identical U.S. trademarks.

 

The new procedures make it possible to challenge non-used U.S. registered trademarks more quickly and efficiently.

Therefore, we recommend you to audit your trademark rights in the United States, in order to avoid the risk of cancellation or reexamination.

As regards your trademark registrations that are currently under review, we invite you to contact us so that we can discuss and develop the best strategy to adapt your registrations to this new regulation.

We can also accompany you in the assessment of your trademarks in order to identify the products and/or services that would be likely to weaken them.

 

See also…

♦ Keeping your registration alive

♦Expungement or reexamination forms

 

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How could Louis Vuitton, a well-known brand, fail to prevent the registration of a competing trademark?

Written by Dreyfus04/04/2022

On November 2, 2020 Louis Vuitton Malletier filed an opposition against the application for registration of the figurative mark “LOVES VITTORIO” designating the same goods in classes 25 and 26, on the basis of Article 8(1)(b) of the European Union Trade Mark Regulation (EUTR). The Office rejected the opposition on the grounds that the similarity between the earlier sign and the contested sign was slight, and thus not sufficient enough to create a likelihood of confusion on the part of consumers with an average level of attention. The opponent invoked article 8, paragraph 5, of the EUTR concerning the reputation of the trademark. However, due to a lack of evidence the judges rejected the complaint without examination of its merits.

 

1. Assessment of the likelihood of confusion in light of the overall impression given by the signs

 

Since the “SABEL BV v. Puma AG” judgment handed down on November 11, 1997 by the  Court of Justice of the European Communities, a new approach to the assessment of the similarity between two signs has been put forward. This approach is more global, notably by studying the three following criteria: visual aspect, aural aspect and conceptual aspect. As a result, the Office conducts a step-by-step analysis of these criteria between the earlier mark and the application for registration of the contested mark.

First of all, on the visual aspect, the Office found a very low degree of similarity insofar as the two signs “have in common only the letter L” and “partially coincide in the stylization of the two letters”. In addition, although the stylization and colours used in the two signs are the same, consumers will perceive these elements as being merely decorative. The judges especially note a difference between the two signs by the addition of the words “LOVES” and “VITTORIO” and the letter “N” in the contested sign.

Likewise, in terms of aural similarity, the judges found only a slight degree of similarity in the pronunciation of the letter “L”. Finally, the Office stated that the two signs are conceptually different.

Thus, the Office concludes that the few similarities between the two signs are not sufficient to cause a likelihood of confusion for the consumer with an average level of attention and that they will distinguish the origin and the source of each sign. Moreover, the relevant public will perceive the sign as a whole, in particular by the addition of the terms “LOVES” and “VITTORIO” as well as the letters “L” and “N”, and will not limit itself to the same stylisation.

However, it must be noted that there is a visual similarity that could lead the relevant public not to perceive the difference between the letters “LV” and “LN” in a clear and precise manner, especially since the added term is “VITTORIO”.

Moreover, in view of the identical goods covered by the two signs, it seems somewhat surprising that the judges did not take this into account, given that according to the “Canon Kabushiki Kaisha and Metro-Goldwyn-Mayer Inc.” judgment handed down on September 29, 1998 by the Court of Justice of the European Communities, a low degree of similarity between the signs can be compensated by a high degree of similarity between the designated goods or services.

 

2. The unfortunate exclusion of the reputation of the earlier mark

 

At first glance, this decision may seem surprising in the sense that the earlier mark “LV” is a mark that supposedly enjoys a strong reputation.

Indeed, this reputation could probably have led the judges to grant the opposition request to the application for the registration of the contested mark, if the latter ” unduly [took] advantage of the distinctive character”; “or the reputation of the earlier mark”; “or [was] detrimental to them”.

However, this exclusion of the reputation of the mark is fully justified insofar as the Office renders its decision by limiting itself to the evidence and arguments provided by the opponent. However, the opponent did not provide evidence of the mark’s reputation, in accordance with Article 7(2)(f) of the European Trade Mark Delegated Regulation

 

It is therefore essential before the filing of any opposition to analyse the similarity between the signs and the goods and services between your trademark and the disputed trademark application, and particularly to provide all relevant evidence demonstrating the intensive use of the trademark or its reputation.

This decision highlights the importance of the evidence provided during a procedure relating to the relative grounds for refusal of registration of a trademark application, evidence that could undoubtedly have allowed a different turn of events.

 

 

See also…

 

♦The current reputation of the trademark is not sufficient to prove bad faith registration of an old domain name

♦Why is the well-knownness of an earlier trademark not enough to qualify bad faith?

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Legal Watch : THE UDRP PROCEDURE

Written by Dreyfus22/03/2022

CYBERSQUATTINGThe UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

 

 

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

 

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

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Can the French public be advertised for the sale of non-prescription drugs on the Internet?

Written by Dreyfus21/03/2022

Stockage médicaments pour préparation de commande en ligneIn France, the online sale of non-prescription drugs is strictly regulated, for public health considerations. Thus, some advertisements are prohibited, including paid referencing on the Internet.

In a dispute opposing a Dutch company to French pharmacists and e-pharmacists, the Paris Court of Appeal ruled, on September 17, 2021, that the Holland based seller who advertised his products on French soil, as well as on the Internet did not, in doing so, carry out acts of unfair competition.

 

In 2015, shop-pharmacie.fr, an online sales site for non-prescription drugs administered by a Dutch company, launched a large-scale advertising campaign on French soil. Millions of flyers were thus included in postal packages sent by major e-commerce players such as Zalando and La Redoute. The Dutch company also carried out a paid referencing strategy on the Internet, targeting the French audience.

This campaign, which French companies could not in any case have carried out, appeared excessive and even unfair for some of the associations representing the profession. The Union des groupements de pharmaciens (the Union of pharmacists’ consortium) and the Association française des pharmaciens en ligne (the online pharmacists Association) thus sought to have this campaign qualified as an act of unfair competition, basing their request on legal provisions of the French Public Health Code.

The Paris Commercial Court granted this request but the Dutch company appealed this ruling. The Paris Court of Appeal then referred the matter to the Court of Justice of the European Union. The question raised was whether France could apply to e-pharmacies established in another EU Member State the same limitations it imposed on French e-pharmacists in regards with the promotion of their business and products on its territory.

 

Greater interests of the Internal Market and rejection of the French protectionism

Can European regulations, in particular Article 34 TFEU and the provisions of Directive 2001/83, allow an EU Member State to impose on pharmacists, who are nationals of another EU Member State, rules derived from Articles R.4235-22 and R.4235-64 of the Public Health and good practices Code issued by the public authority of the Member State?

The Court of Justice of the European Union answered this question in its October 1st 2020 decision C-649/18 by the negative. This legal and political decision relied namely on the fundamental notion of the European internal market.

This decision brought the protectionism of the French provisions to a standstill but it was initiated in 2016 by the French Competition Authority which at the time stated that the French legislation introduced “additional constraints that appear to be disproportionate for the intended purpose of public health protection” (French Competition Authority, 20th April 2016, notice n°16-A-09 §91). In 2019, another notice further supported this opinion and stated that online sale was “obstructed in its development by excessive constraints that limit the development of players established in France compared to their European counterparts” (French Competition Authority, 4th April 2019, notice n°19-A-08).

Thus, the European justice system decided to mitigate the implementation of the French legal limitations in order to protect the Internal Market.

 

Possibility of limiting advertising on French territory through targeted legal provisions

The Court of Justice of the European Union has established a first principle whereby a Member State can impose limitations on advertising if its legislation is strictly circumscribed. The Paris Court of Appeal followed this clarification in the dispute between French pharmacists and the Dutch e-pharmacy and ruled that the provisions invoked from the French Public Health Code were not specific enough. More precisely, they did not solely target drugs, but referred to the general term of “pharmaceutical products”.

The door is therefore left open for the French legislator to specify its legal provisions relating to the framework of pharmaceutical drugs online advertising.

 

Paid referencing on the Internet in principle possible for companies established in another Member State of the European Union

In order to prevent the over-consumption of pharmaceutical drugs, French law prohibits French e-pharmacies from carrying out paid referencing campaigns in the digital space, particularly on search engines and price comparators.

In this case, the Court of Justice of the European Union stated that such referencing is in principle possible, unless it is limited by a measure that is necessary and proportionate to the purpose of safeguarding public health. Therefore, the general rule is that referencing is possible, unless the opposing Member State provides a targeted, proportionate and necessary legal rule.

Yet, such legislation does not exist in France. Moreover, the provisions of the Public Health Code that have been included in the debate seem inadequate for e-commerce. Indeed, e-commerce has its own constraints, namely its universal, instantaneous and continuous access via the Internet. Consequently, it seems very difficult to provide a sufficiently concrete and specific framework for the practice of paid referencing on the Internet for this type of activity.

 

To sum up, French e-pharmacists and e-pharmacists located in other EU Member States are not on an equal footing regarding advertisements carried out in France.

This case provided the Paris Court of Appeal the opportunity to reaffirm the right to paid referencing by stating that the decree of December 1st 2016 “relating to the technical rules applicable to e-commerce websites for pharmaceutical drugs ” and relating in particular to the prohibition on referencing in search engines or price comparators in return for payment, was unenforceable. Furthermore, the French Council of State had annulled this decree on March 17, 2021.

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LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

 

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

 

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