Building a reputation is the very goal of any brand. This reputation is normally attached in law to the sign and to the company that filed and operates it. However, in the context of zombie trademarks, the mark does not symbolize the reputation of the current owner but that of the original owner.
Indeed, these zombie trademarks are signs that have been abandoned but still have marketing potential, a reputation.
A zombie trademark presupposes an indisputable relinquishment, that is to say an abandonment both in fact and legally. It then falls into the public domain.
As long as a brand continues to be used and is renewed every ten years, it can exist perpetually, contrary to patents and the author’s economic rights. However, sometimes a company discontinues the use of some of these signs.
This abandonment can occur any time, whether while the filing is still under review or even when the sign has been in use for a long time. In terms of non-use, a sign is abandoned when a holder stops using it without the intention of resuming its operation, for five consecutive years according to Article L 714-5 of the French Code of Intellectual Property.
Although perpetually renewable, in practice the vast majority of brandshave a limited lifespan. They are born and they die. However, it happens that some experience a different fate. They are resurrected.
As we can see with the zombie trademarks, abandonment doesn’t have to be permanent.
A company that has given up its rights to a trademark cannot normally prevent a newcomer from bringing a trademark “back from the dead”. Indeed, the disputed sign has returned to the public domain, which theoretically allows anyone to be able to dispose of it freely.
An abandoned trademark is in principle available to everyone.
In France, it is possible to take action against a so-called deceptive brand. Article L. 711-3 c) of the French Intellectual Property Code provides that signs “likely to deceive the public, in particular as to the nature, quality or geographical origin of the product or service” cannot be adopted as a trademark. The former owner also sometimes has the opportunity to initiate unfair and parasitic competition claims.
Resurrecting a brand can thus be of major asset for a company wishing to take advantage of the notoriety of a distinctive sign that has returned to the public domain. However, some of these marks are not legally neither quite dead, nor quite alive, and it is advisable to be very careful, given that the case law is still rare and uncertain on this subject.
Dreyfus is experienced in anticipating, securing and optimizing IP portfolios, which ultimately adds value to our clients’ businesses.
In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by Dreyfus’ legal team.
La notoriété d’une marque ne suffit pas à garantir le transfert d’un nom de domaine similaire
Rémy Martin & C fait partie du groupe Rémy Cointreau, une grande entreprise de cognac. Fondée en 1724, cette maison est l’un des principaux acteurs de la production et de la fabrication du cognac en France.
Le groupe détient un large portefeuille de la notoriété d’une marque comprenant les éléments verbaux « louis » et « louis xiii » en lien avec son cognac Louis XIII le plus célèbre et le plus cher.
Suite à la détection du nom de domaine < louisthirteen.com >, E. Remy Martin & C a déposé une plainte auprès du Centre d’Arbitrage et de Médiation de l’OMPI, afin d’obtenir le transfert de ce nom de domaine.
Le nom de domaine est composé de « louis » qui est identique à la première partie de la marque et est suivi de « treize ». Un nom de domaine qui consiste en une traduction d’une marque est généralement considéré comme identique ou similaire à cette marque . « Treize » est la traduction littérale en anglais du chiffre romain « xiii », comme l’a reconnu l’expert.
Or, en examinant les différentes pages du site Internet de l’intimé, le panéliste constate que le nom est utilisé pour une véritable offre de produits en marque blanche, notamment des masques de protection contre les bactéries et les virus dans le cadre de la lutte contre le Covid-19. Bien que le Défendeur n’ait pas répondu à la plainte, des mentions légales sont présentes sur le site et une recherche rapide sur Internet des sociétés britanniques montre un enregistrement de la société Louis Thirteen Group Limited en juin 2019, soit 18 mois avant le dépôt de la plainte.
Même si la marque antérieure bénéficie d’une large protection, l’expert précise qu’il n’est pas évident que le Plaignant puisse s’opposer à l’utilisation d’un nom commercial « louis thirtheen » pour des activités aussi différentes des siennes.
La lourde charge de la preuve incombant au Plaignant pour s’opposer à l’usage de la notoriété d’une marque.
Dans l’Union européenne et au Royaume-Uni, le titulaire d’une marque notoirement connue ne peut s’opposer à l’utilisation d’une marque similaire/identique que si l’utilisation par le tiers tire indûment profit de ladite marque ou porte atteinte au caractère distinctif ou à la renommée. de cette marque.
L’expert constate que le Plaignant a manqué à sa charge de la preuve dans la mesure où il existe une possibilité réelle que le nom correspondant au nom de domaine ait été utilisé dans le cadre d’une offre de bonne foi de biens et de services antérieure à la notification du litige.
Dès lors, l’expert considère qu’il n’est pas prouvé que l’intimé n’ait aucun droit ou intérêt légitime sur le nom de domaine. Ainsi, il n’a pas à établir que le nom de domaine a été enregistré et utilisé de mauvaise foi.
La possibilité de saisir la justice reste ouverte
Pour les motifs qui précèdent, la plainte est rejetée. Cependant, l’expert déclare que cette décision n’affecte pas le droit du Plaignant d’intenter une action en contrefaçon de marque contre le Défendeur devant les tribunaux.
Une recherche rapide sur Internet aurait dû permettre au Plaignant d’identifier l’existence de Louis Thirteen Group Limited et de conclure que l’UDRP n’était pas un for approprié pour ce litige, qui devait être abordé de manière globale et non limité au seul nom de domaine. .
Par ailleurs, Louis XIII est le nom d’un roi de France et la marque antérieure n’est donc pas fantaisiste , élément que le panéliste a pu prendre en compte dans son analyse, même s’il ne l’a pas mentionné explicitement.
Since April 2020, it is possible to bring an action for nullity or revocation of a trademark before the INPI, a competence so far reserved for the courts.
The INPI’s e-procedures portal now makes it possible to introduce trademark invalidity or revocation requests. These new provisions entered into force with the PACTE law on April 1, 2020.
The procedure is instructed at the INPI by a team of specialized lawyers. It potentially makes unused trademarks available for new actors to use them, and enables to remove invalid trademarks or trademarks contrary to public order.
Applications for nullity or revocation of a trademark are only made electronically through a simple and fast tool, including online help and a secure payment area.
This administrative procedurereplaces the procedure for contesting a trademark in court, which remains possible in certain specific cases, such as for infringement actions.
Who can request the invalidity of the trademark?
In the past, it was necessary to justify an interest in taking action to request the invalidity of a trademark. This interest in acting could, moreover, be strictly assessed.
From now on, when the request is based on an absolute ground of nullity, it is no longer necessary to prove an interest in bringing proceedings.
Absolute grounds for nullity relate to the intrinsic value of the trademark. For example, if the trademark is descriptive of the products it designates (such as “white chocolate” for … white chocolate), then any person can request that it be void, without justifying any damage that would be specific to them.
What are the characteristics of the procedure?
The procedure for nullity or revocation of a trademark opened before the INPI is a written and exclusively electronic procedure, accessible via the INPI e-procedures portal.
This procedure is subject to the adversarial principle, allowing the parties to exchange and confront their arguments several times throughout the procedure. The duration of the procedure is therefore dependent on the will of the parties, up to three contradictory written exchanges can be organized.
Finally, said procedure allows the presentation of oral observations. This hearing, at the request of one of the parties or the INPI, is organized at the end of the written exchanges.
Can we appeal the decision?
The decision is subject to appeal before a court, the appeal being devolutive and suspensive.
The decision of the INPI, like a court decision, can be appealed to the Court of Appeal of the applicant’s domicile.
The Parties will have one month to file an appeal, by electronic means, upon notification of the INPI decision. Some mandatory information are required, otherwise the claim could be deemed inadmissible.
This appeal has a suspensive but also a devolutive effect, which means that the judges will have the obligation to retry the case in its entirety.
During the appeal process, the Parties have three months to hand in their submissions together with all of their substantive claims.
If necessary, a cassation appeal may be lodged subsequently, by the director of the INPI or the Parties.
What is the current state of this new procedure?
This new procedure made it possible to reduce a disparity that existed between France and the European Union, since this option was already offered before the European trademark office EUIPO.
Saving time and money for those who introduce the action but at the same time more risk of seeing your brand attacked if it is vulnerable.
The INPI case law databases show that 131 decisions have since been issued on April 1, 2021 ruling on the revocation or maintenance of a mark and 55 on the invalidity of a mark. It takes about six and a half months for a decision to be rendered.
By its simplicity and speed, the new trademark invalidity action procedure before the INPI helps relieve the congestion in the courts. Thus, decisions can be rendered relatively quickly and above all, more actions will be taken thanks to the limited costs of an administrative procedure.
Benefit from the new nullity and revocation proceedings before the INPI (French Office), Dreyfus can help you!
In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.
Visual Merchandising (VM) represents all store layout techniques. It is the art of implementing the identity dimension through scenarization of points of sale.
The term Visual Merchandising is born in the United States in the 1950s with the rise of art in business. Andy Warhol made the first storefronts in New York. After the years of the Depression, it was necessary to boost the economy with eye-catching storefronts.
The industry is branded, every brand is unique and represents your business in the market.
It is the art of implementing the identity dimension of a store through a scenarization of spaces. It is a true creation of the company which displays its own identity in its store.
Visual merchandising makes it possible to reconcile commercial efficiency, aesthetics and enhancement of the image of the brand in order to attract customers and retain them. There are different channels to seek legal protection of your investments in visual merchandising.
How to protect store layout -Visual Merchandising with copyright law?
Interior design is likely to be protected by copyright, provided that the criteria of form and originality are met! In the“Ladurée” case, the Paris Court of Appeal acknowledged the originality of the layout: “The elements and spaces created bore the imprint of the author’s personality and in the choice of style, colors and decoration the personality of the author was reflected”.
How to protect store layout -Visual Merchandising with trademark law?
To be protected, a trademark must be distinctive, lawful and available. Thus, the company Apple Incwas able to obtain the registration of its sales spaces as a three-dimensional trademark.
How to protect store layout -Visual Merchandising with unfair competition and free-riding ?
The main act of unfair competition potentially occurring in visual merchandising is confusion / imitation: causing, in the mind of the customer, an assimilation or a similarity between two companies or between their products and services.
In theZadig Voltaire v. Bérénice case, the company Zadig France based its claim to protect the fittings of its stores on unfair competition.
Parasitism refers to “the set of behaviors by which an economic agent interferes in the wake of another in order to profit, without investing anything, whether its efforts or its know-how”.
What precautions should you take to protect your IP rights?
To protect your IP rights, it is paramount to take several precautions:
* Ensure that confidentiality clauses are included in your contracts;
* Provide for nondisclosure agreements;
* Be vigilant on the terms of transfer of rights between the creator and the company.
For example, the Court of appeal of Paris considered in the Petit Bateau case that the publication by an employee of photographs revealing the new collection of a clothing brand, even on a private Facebook account, constitutes a serious fault justifying the dismissal.
The Court ruled that the employee at the origin of the publication had committed the serious fault of having communicated to third parties confidential information, while its employment contract expressly provided for an obligation of non-disclosure.
This way you obtain a monopoly, which can be renewable indefinitely and which will constitute the pillar in your marketing and sales strategy.
It is important to register the trademark from the genesis of the project. To that end, it will be necessary to determine a limited but suitable territory. Likewise, it is important to think globally and digitally, and to envision the protection of domain names when registering your trademark.
The domain name is an important asset!
Today, intellectual property of which domain names are a part is identified by insurers as one of the top three risks facing businesses.
Domain names in particular serve as vectors for ever more sophisticated and varied frauds. Managing your brand on the internet is not just about filing and renewing, but also building a strategy.
It is important not only to invest in a protection and preventive defense strategy but also to set up appropriate watch services for your brand.
Finally, you must be particularly vigilant about the use that is made of your brand on the Internet by avoiding “bad buzz” that is harmful to your reputation.
As a creation, Visual merchandising is a real intellectual and economic investment that is essential to protect.
Dreyfus & associés
In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.
Digital Services Act : For the first time, a common set of rules on the obligations and liability of intermediary services within the single market will open up new possibilities to provide digital services on the Internet across borders, while ensuring a high level of protection to all users, wherever they live in the European Union.
On December 15, 2020, the European Commissionpublished the Digital Services Act (DSA) and Digital Market Act (DMA) draft regulations, which should allow the implementation of a new regulatory framework, to put an end to the lack of responsability of digital giants.
Said regulations should come into force at the beginning of 2022.
The legal framework relating to digital services on the Internetremained mainly governed by the so-called “Electronic Commerce” directive of June 8, 2000, which for several years has already been met with numerous criticisms on the grounds that it has become obsolete and no longer allows to respond effectively to the new digital challenges and the difficulties posed by the emergence of Web giants, often referred to by the acronym “GAFAM” (for Google, Apple, Facebook, Amazon and Microsoft).
It is in this context that the European Commission officially announced its desire to modernize the regulatory landscape relating to digital platforms on the Internet.
As part of its strategy for a digital single market and alongside theDigital Market Act, the European Commission is proposing a regulation on digital services which will be subject to the ordinary legislative procedure of the European Union.
For Margrethe Vestager, executive vice-president for a Europe adapted to the digital age, “the two proposals serve the same purpose: to ensure that we, as users, have access to a wide choice of products and services online, securely. And that businesses operating in Europe can compete freely and fairly online just as they do offline. They are two sides of the same world. We should be able to shop safely and trust the information we read. Because what is illegal offline is also illegal online”.
For the first time, a common set of rules on the obligations and liability of intermediaries within the Single Market will open up new possibilities to provide digital services across borders on the Internet, while ensuring a high level of protection for all users, wherever they live in the European Union.
In order to protect Internet users against theproliferation of illegal content and to adapt the existing legal framework to the emergence of new players on the Internet, public authorities have considered various regulatory strategies.
What is illegal content?
Illegal content is defined as any content that does not comply with European Union law or the national law of a Member State (Article 2, g). In other words, the proposed regulation does not define what is illegal, but refers to European and national laws and regulations.
The directive of June 8, 2000 did not define the concept of illegal content either.
Who will be affected by the new rules?
The proposed regulation aims to apply to any provider of intermediary services, whether established in the EU or not, as long as the recipients of such services are established or reside in the EU.
As forintermediary service providers, the proposal maintains the qualifications as provided for in the directive of 8 June 2000, namely network access and data transmission providers, caching operators and hosting providers.
Tthe proposal introduces a new qualification: online platforms. These are defined as hosting service providers who, at the request of the recipient of the service, store and distribute content to a potentially unlimited number of third parties (Article 2, h). Thus, unlike hosting providers, these players also allow content to be distributed.
Note that the proposed regulation makes a distinction between platforms and “very large” platforms. The latter are those that exceed the threshold of 45 million users per month. Said threshold will be reassessed every six months. Indeed, in addition to a set of common rules applicable to any platform, the proposal provides for a reinforced legal framework for “very large” platforms.
Under the directive of June 8, 2000, the platforms were qualified as hosts on several occasions by the courts. Consequently, they currently benefit from a reduced liability regime provided for in that directive.
Thus, these actors are only responsible with regard to the published content if they have effective knowledge of its illegal nature or if, once they have become aware of it, they have not acted promptly to remove it or to make its access impossible.
Is a new liability regime planned?
The proposed regulation does not introduce a new liability regime. Like hosting providers, the platforms will remain subject to the reduced liability regime provided for by the directive of 8 June 2000. The principle of the prohibition of imposing a general surveillance obligation on hosting providers, including the platforms, is also maintained.
However, compared to hosting providers, platforms will have additional obligations which may vary depending on their size.
In addition, unlike the directive of June 8, 2000, the proposal clarifies that content moderation systems voluntarily put in place by intermediary service providers (hosts, platforms, etc.) do not call into question the benefit of the lightened liability regime provided for in the proposal.
The DSA will thus set up control and monitoring mechanisms. At European level, this will be done through a new, fully independent body: the “European Digital Services Committee” (Art. 47-49) in charge of the committee’s advice and national coordinators.
At the level of the Member States, each will have to designate one or more authorities to ensure the application of the future regulation, including one responsible for the coordination of digital services (Articles 39 to 45). The entire framework will be supplemented by soft law: standards, code of conduct, in particular with regard to online advertising (art. 36).
The DSA is thus presented as an ambitious overhaul of the European legislative framework for digital services on the Internet.
A major project in Brussels, the Digital Services Act (DSA) tends to govern digital technology on the old continent for the years to come. In preparation for many months, the text was officially presented in mid-December 2020 and should enter into force in the next 18 to 24 months after agreement of the Member States and vote of the European Parliament.
In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues with our articles written by the Dreyfus’ legal team.
In a decision handed down on 23 February 2021, the Paris Court of Appeal offers some guidelines in copyright infringement, recalls some key principles and provides an overview of all the usable means of defense.
In this case, the internationally renowned artist Jeff Koons was condemned for copyright infringement, in solidum with his co-defendants and the Court awarded €190 000 in damages. This amount greatly exceeds the amount awarded in the first instance, where the Court ordered Jeff Koons and his co-defendants to pay €135,000 in damages.
Let’s dive into the facts: in 1988, Jeff Koons started his “Banality” series of works, which consisted of creating three-dimensional objects inspired by various images. One of the works in this series, “Fait d’hiver”, shows a young woman in a fishnet corset, lying in the snow, with a small pig wearing a barrel around its neck.
In November 2014, the Centre Pompidou in Paris hosted a retrospective of Koons’ work, in which several works from the “Banality” series were exhibited, two of which have been subject to infringement lawsuits.
One of the two disputed works is “Fait d’hiver”. The designer of a 1989 advertising campaign for the company Naf-Naf, Frank Davidovici, sued the Centre Pompidou and Jeff Koons, among others, for copyright infringement of the campaign. At that time, the Naf-Naf brand’s Autumn/Winter collection was presented to the general public thanks to a photo of a young woman lying on the snow and accompanied by a pig, wearing a collar reminding one of a Saint Bernard dog.
On November 8, 2018, the Paris Court of First Instance found all the defendants guilty of infringing Frank Davidovici’s economic and moral rights. In their appeal, the defendants then set out all the possible defences in the context of such infringement action.
Was the “fair use” exemption a good idea?
Insofar as Jeff Koons’s work “Fait d’hiver” was conceived in the United States, the artist upheld that United-States law should have applied. To strengthen his argument, he relied on the Rome II Regulation, which seeks to preserve the principle of “lex loc protectionis” about “a non-contractual obligation arising from an infringement of an intellectual property right”. It would have been a mistake for Jeff Koons not to try to benefit from this Regulation, notably since American law provides for the “fair use” exception, which allows the exclusive rights of an author to be limited, in particular, to allow his work to be parodied (17 U.S.C. §107). But let’s remember that in 1992, Koons lost an action in which he had claimed this exception. At the time, the Court charged him with copyright infringement for his sculpture “String of Puppies”, which was considered a copy, with a few differences, of a photo taken by the American photographer Art Rogers. The judges deemed that the slight differences between the original photograph and the sculpture were insufficient to rule out infringement.
That said, and thus contradicting one of Jeff Koons’s arguments showing the differences between his “Fait d’hiver” and that of Naf-Naf, the Court of Appeal recalls that infringement is not assessed regarding the differences, but rather in terms of the similarities between the works involved.
Not too much of a surprise, the Paris Court of Appeal found that French law applied to “Fait d’hiver” insofar as the copyright infringement took place in France. Hence, the exception of fair use was not applicable in the present case.
Did Frank Davidovici have legal standing?
Koons then claimed that Frank Davidovici lacked legal standing. Indeed, the original photograph was a collective work and therefore the property of Naf-Naf. The evidence provided by the appellants was not enough for the Court of Appeal, which came to the same conclusions as at first instance, namely that the advertising campaign was not a collective work but a collaborative work, in which Frank Davidovici’s contribution could be “individualized”, and that the other authors had assigned their economic rights to him.
On the French five-year limitation period for infringement
The appellants argued that the work had been created more than 20 years before the subpoena (which took place on January 9, 2015), that it had been exhibited since 1995 in a Parisian gallery. In addition, they claimed that Jeff Koons displayed the reproduction on his website where he described it as ‘unmissable to anyone interested in [his] work’ and by “anyone”. Koons targeted the respondent.
The Court of Appeal rejected this argument since the respondents were criticising the exhibition at the Centre Pompidou, which had begun in November 214, i.e. two months before the subpoena.
Pleas in law based on the freedom of artistic expression and the parody exception
The appellants invoked Article 10 of the ECHR (European Convention for the Protection of Human Rights) to remind them that judges shall not interfere with the artists’ creative freedom or deny their artistic approach. However, this article also states that the artistic freedom of expression includeslimitations, and in this case, the latter was legal since it relied upon Article L.122-4 of the French Intellectual Property Code. This article condemns any adaptation or transformation of a work without the consent of its author. Considering that the sculpture uses the dominant elements of the original photograph (the penguins and the pig’s flower necklace being of little relevance) and that it makes no mention of Davidovici’s work, Koons was obviously at fault. There is a very narrow line between inspiration and infringement of earlier work.
The appellants also sought to invoke the parody defence, relying on the definition given by the CJEU (Court of Justice of the European Union) in 2014 in the Deckmyn case, which stated that “the essential characteristics of parody are, first, to evoke an existing work while being noticeably different from it, and, secondly, to constitute an expression of humour or mockery“. The Paris Court of Appeal considered here that the humorous purpose was certainly not obvious, insofar as Koons described his “Fait d’hiver” as being “a work on renewal“, the illustration of the “process of self-acceptance“. Besides, according to the Court, there was a gap of almost 30 years between the advertising campaign and the sculpture. This period was so long that the public might not have perceived the parody.
The boundary between free inspiration and art infringement is very narrow, and sometimes difficult for artists to apprehend. Despite the solid defence strategy of Jeff Koons, one must acknowledge that it is essential to obtain prior approval before creating a work that may infringe the rights of another artist.
The Copyright Directive n° 2019/790 of April 17, 2019 is a milestone in strengthening the protection for authors and performers. The provisions of the directive regarding contracts in the field of literary and artistic property generally tend to rebalance the legal relationship between contractors, to the benefit of creators. This is notably reflected in the rules on contract chains.
A. The European classifications of contract chains in the field of copyright law
The European legislator specifies the chains of contracts that are subject to the new regulation.
1. Primary contracts: Licenses and transfer of rights
As regards primary contracts, Article 18(1) of the Directive distinguishes between licenses and transfer of rights.
These provisions thus implicitly rely on a criterion, which looks at whether there is a transfer of ownership or not, and which is used in French law to distinguish between assignments and licenses, to classify contracts in the field of literary and artistic property. So far, this aspect was not clearly stated in the intellectual property code.
In other words, the assignment is a transfer of ownership whereas the license confers only an exploitation right: the assignment is therefore always exclusive whereas the license is not necessarily exclusive; the assignment includes, in particular, a transfer of ownership of the infringement action, which is not the case in a license.
2. Secondary contracts: sub-licenses, licenses and subassignments
When the primary contract is a license, the secondary contract is a sub-license, by virtue of Article 19 of the Directive.
Where the first contract of the chain consists in a transfer of ownership, the second contract will be, depending on the case, assimilated to either a licensing contract (if its object is to confer an exploitation right) or to a sub-assignment contract (if another transfer of ownership is completed).
B. Increased protection of creators in contractual matters
The new European provisions outline a legal regime that strongly protects creators in contract chains, and thus substantially reform the case law of the Court of Cassation on these issues.
1. Prior to the enactment of the directive, limited protection for authors in chains of contracts
In French law, many specific provisions in the field of literary and artistic property aim at protecting the author in his/her contractual relations, especially the rules concerning the formal requirements of authors’ contracts. Yet, the protection of the author beyond the first contract remained rather limited.
Indeed, the intellectual property code does not specifically regulate contract chains. In a Perrier decision dated October 13, 1993, the French Supreme Court distinguished between contracts concluded with authors and contracts concluded between operators, considering that the latter operators were not subject to the provisions of the intellectual property code. Thus, the obligations of sub-operators towards authors were limited.
For instance, an obligation of transparency towards authors had already been enacted, but it was very limited, and only concerned distributors of long cinematographic works and audiovisual works created thanks to funding from the National Center for Cinema and the Moving Image (articles L213-28 and L251-5 of the Cinema and the Moving Image Code).
Similarly, the principle of a proportional remuneration of authors by sub-operators was interpreted quite restrictively, and only applied to audiovisual works, according to rulings of the French Supreme Court dated July 16, 1998, and May 29, 2013.
2. The benefits of the Copyright Directive for authors and performers
The Directive changes the old framework and extends the protection of creators in contractual matters.
From now on, Article 19 of the European Union directive states an obligation of transparency for sub-operators towards authors and performers, and grants authors and performers a direct right of action against sub-operators who would not comply with their obligation.
Moreover, Article 18 generalizes the principle of appropriate and proportional remuneration by the sub-operator to authors and performers to all fields of literary and artistic property.
Finally, Article 20(1) establishes an adjustment mechanism together with a direct right of action for authors or performers against the party with whom they have concluded a contract for the exploitation of rights or against their successors. This mechanism is designed to provide for an additional remuneration when the remuneration initially agreed upon proves to be unreasonably low compared to the total income subsequently derived from the exploitation of the works or performances.
The European directive therefore extends the regulation of contract chains in the field of literary and artistic property, while strengthening the protection of creators.
Article 34 of Law n°2020-1508 of December 3, 2020 authorizes the French government to enact, by ordinance, any law aimed at ensuring the transposition of articles 17 to 23 of this directive.
(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)
Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .
En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.
Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge. Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine. L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.
En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine . Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.
Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.
L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».
En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.
Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.
Over the past two decades, like other countries in Central and Eastern Europe, Belarus has focused its efforts on the transition to a knowledge-based economy. To do so, the government is supporting the development of an innovation ecosystem that fosters business growth and the country’s long-term economic viability. Strengthening the national intellectual property system is at the heart of this project.
The Hague system offers the owner of an industrial design the possibility of obtaining protection for his design in several countries by filing a single application in one language with a single Office.
This system is administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.
Since May 13, 2015, the United States and Japan can be designated as countries for the registration of an international design. Most recently, Belarus joined the Hague System for the International Registration of Industrial Designs.
As a general rule, industrial design protection is limited to the country in which it was granted. The Hague Agreement Concerning the International Registration of Industrial Designs provides for an international registration procedure: the applicant can make a single international deposit, with WIPO. The holder can designate as many Contracting Parties as he wishes.
An international registration produces the same effects as those of a registration effected directly in each of the countries designated by the applicant, provided that protection is granted by the competent Office of such country.
On April 19, 2021, Belarus deposited its instrument of accession to the Geneva Act (1999) of the Hague Agreement with the Director General of the World Intellectual Property Organization (WIPO). The Republic of Belarus becomes the 66th Contracting Party to the 1999 Act and the 75th member of the Hague Union.
This accession brings the total number of countries covered by the Hague system to 92, expanding the system’s coverage further into the Commonwealth of Independent States (CIS).
This Agreement allows the registration of an industrial design in several countries through a single application to the International Bureau of WIPO.
The advantages of such an international design filing are numerous.
On the one hand, it considerably reduces formalities while offering registration in several countries. On the other hand, it makes it possible to simplify the subsequent management of the design as all the acts necessary for the protection of this design, such as renewal or registrations, will be carried out through a single procedure.
Besides, it is interesting to note that, unlike the international trademark system, no prior national application or registration is necessary to apply for an international design.
Finally, the only limit to this international industrial design system is the number of members. Indeed, only the States members of the Hague Agreement as revised on several occasions and in particular by the Geneva Act of 1999, can be designated by this international registration.
In other words, and once again in a manner comparable to the international mark, in order to designate certain countries, the applicant will have to file a national design and will have to go through the accompanying formalities.
Since July 19, 2021, Belarusian businesses and designers will be able to start using the Hague System to protect their designs internationally by filing a single international application covering up to 100 designs.
Wednesday March 31, 2021 was the very last limit set by the National Commission for Informatics and Freedoms (Cnil), for French advertisers to comply with European rules relating to cookies.
From Thursday, April 1, 2021, the banner on websites is required to enable much more explicitlyInternet users to “refuse” these computer tracers much more explicitly.
This is one of the measures voted in 2016 by the European Union in the General Data Protection Regulation (GDPR)and entered into force in May 2018 in all 28 (now 27) member states.
When they browse the web or use mobile applications, Internet users are increasingly followed by various actors (service editors, advertising agencies, social networks, etc.) who analyze their browsing, their movements and their consultation or consumption habits, in particular in order to provide them with targeted advertising or personalized services.
This tracing is carried out by means of various technical tools, “tracers“, of which cookies are a part.
Cookies are small pieces of text inserted into your browser while you are browsing the web.
There are various types of cookies and have multiple uses: they can be used to remember your customer ID with a merchant site, the current content of your shopping cart, the language of the web page, an identifier allowing to track your navigation for statistical or advertising purposes, etc.
They are a source of concern for many users, while others are not even aware of their existence apart from the mandatory pop-ups on all websites that ask you to “Accept cookies“.
In France, the National Commission for Informatics and Liberties (CNIL) carries out numerouschecks and issues sanctions for non-compliance with the GDPR and French legislation.
Your website is required under the EU’s General Data Protection Regulation (GDPR) to allow European users to control the activation of cookies and trackers that collect their personal data.
This is the essential point of consent to the use of cookies according to the GDPR – and the future of our digital infrastructures.
The CNIL reminds that the consent requirement provided for by these provisions refers to the definition and the conditions provided for inArticles 4 and 7 of the GDPR.
It must therefore be free, specific, enlightened, unambiguous and the user must be able to withdraw it, at any time, with the same simplicity with which he has granted it.
In order to remind and clarify the law applicable to the deposit and reading of tracers in the user’s terminal, the CNIL adopted guidelines on September 17, 2020, supplemented by a recommendationaimed in particular at proposing examples of modalities consent collection practices.
Consent must be manifested by a positive action of the user, informed beforehand, in particular, of the consequences of his or her choice and having the means to accept, refuse and withdraw his or her consent. Appropriate systems must therefore be put in placeto collect consent in practical ways that allow Internet users to benefit from easy-to-use solutions.
Acceptance of general conditions of use cannot be a valid method of obtaining consent.
The CNIL will therefore now carry out checks to assess compliance with the rules relating to tracers, in application of article 82 of the Data Protection Act and articles 4 and 7 of the RGPD on consent, as summarized in its guidelines.
Through this action, the CNIL intends to meet the expectations of Internet users who are increasingly sensitive to Internet tracking issues, as evidenced by the constant complaints it receives on this subject.
If breaches are noted following checks or complaints, the CNIL may use all the means made available to it in its repressive chain and issue, if necessary, formal notices or public sanctions.
The evolution of the applicable rules, clarified by the guidelines and the recommendation of the CNIL, marks a turning point and progress for Internet users, who will now be able to exercise better control over online tracers.
Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.
Our site uses cookies to offer you the best service and to produce statistics, and measure the website's audience. You can change your preferences at any time by clicking on the "Customise my choices" section.
When browsing the Website, Internet users leave digital traces. This information is collected by a connection indicator called "cookie".
Dreyfus uses cookies for statistical analysis purposes to offer you the best experience on its Website.
In compliance with the applicable regulations and with your prior consent, Dreyfus may collect information relating to your terminal or the networks from which you access the Website.
The cookies associated with our Website are intended to store only information relating to your navigation on the Website. This information can be directly read or modified during your subsequent visits and searches on the Website.
Necessary cookies are absolutely essential for the website to function properly. These cookies ensure basic functionalities and security features of the website, anonymously.
Dreyfus is concerned about protecting your privacy and the Personal Data ("Data"; "Personal Data") it collects and processes for you.
Hence, Dreyfus complies every day with the European Union legislation regarding Data protection and particularly the European General Data Protection Regulation Number 2016/679 of 27 April 2016 (GDPR).
This Privacy Policy is aimed at informing you clearly and comprehensively about how Dreyfus, as Data Controller, collects and uses your Personal Data. In addition, the purpose of this Policy is to inform you about the means at your disposal to control this use and exercise your rights related to the said processing, collection and use of your Personal Data.
This Privacy Policy describes how Dreyfus collects and processes your Personal Data. The collection happens when you visit our Website, when you exchange with Dreyfus by e-mail or post, when exercising our Intellectual Property Attorney and representative roles, when we interact with our clients and fellow practitioners, or on any other occasion when you provide your Personal Data to Dreyfus, in particular when you register for our professional events.
The protection of intangible assets as well as the efficient management of zombie trademarks or patents portfolio contribute to the proper development of a company and its business.
In a decision handed down on 23 February 2021, the Paris Court of Appeal offers some guidelines in copyright infringement, recalls some key principles and provides an overview of all the usable means of defense.
The 
