Enterprise names and Trademarks in China

Written by Dreyfus04/09/2019

The Asian giant – hitherto invisible – has become one of the countries where most patent and trademark applications are filed. It is not surprising that companies from all over the world want to have a presence in China. However, several factors must be taken into account when setting up these companies’ such as the features that must be contained in their corporate names.

One of the first steps for foreign companies is to decide on a suitable name for the Chinese market. The main pieces of legislation governing this issue are the Regulations on Registration and Management of Enterprises Name and the Implementation Measures on Registration and Administration of Enterprise Names, which detail how the name of Chinese companies should be structured and what information should be included.

In China, company names must be composed, according to these regulations in a specific format, and must be composed of i) Administrative Division, ii) Trade name, iii) Industry and iv) Organizational form, except as otherwise provided by law

Other regulations restrict the content of names, prohibiting the use of content that could mislead consumers or jeopardize free competition, or injure or contradict national unity, politics, social ethics, culture, or religion. Special characters, such as Arabic numerals, foreign symbols or alphabets, are not allowed, and certain words such as “China,” “Chinese,” “national,” “State,” or “international” may only be used on rare occasions.

In certain circumstances, a company could use an enterprise name without including the administrative division. This may be by the approval by the State Council, or when the share capital value is at least CNY 50 million. Such authorization can be granted by the State Administration for Market Regulation.

It seems clear that the strongest feature in choosing a company name in China is the trade name. Similar company names can co-exist, unless exactly the same trademark has previously been registered, in which case a trade name challenge could be attempted by the trademark’s proprietor.

The JINGKE Case illustrates the conflicts that may arise between trade names and trademarks.

On November 29th, 2010, Shanghai Precision & Scientific Instrument Co., Ltd. (PI) sued Shanghai Jingxue Scientific Instrument Co., Ltd. (Jingxue) and Chengdu Kexi Complete Sets of Instruments Co., Ltd. (Kexi) in Shanghai Pudong New Area People’s Court.

Shanghai Precision & Scientific Instrument Co., Ltd. complained that the defendant maliciously registered and used plaintiff’s business name in the abbreviated form of “精科” (JINGKE in Chinese).

They said that because it is well known in the industry, as a trademark; its use by the defendants constituted acts of unfair competition causing serious prejudice to the plaintiff’s legitimate interests.

They therefore asked for injunctive and compensatory relief against the two defendants.

The defendants contended that Kexi is the owner of the registered trademark JINGKE, and that its use of the trademark is protected under the law. They also counterclaimed against plaintiff for trademark infringement in using SHANGHAI JINGKE in connection with its products and packaging.

The court found that before the mark JINGKE was applied for registration, “Shanghai Jingke” and “Jingke” had been used as abbreviated business names, attaining a degree of notoriety and becoming in effect plaintiff’s trade names, and therefore deserving protection as such.

Accordingly, the Court held:

Firstly, that the defendant Kexi,by securing the trademark registration of, and by using plaintiff’s abbreviated trade name JINGKE (already in use), and secondly, that the defendant Jingxue by using the JINGKE mark on its products via third parties by permission of defendant Kexi, both infringed plaintiff’s rights to its corporate business name, and were thus guilty of unfair competition.

The court then granted an injunction against the defendants for unfair competition, and awarded damages.

Both defendants appealed to Shanghai No.1 Intermediate People’s Court. The Court of Appeal held that abbreviated business names can be considered to be corporate names if they have gained some notoriety in the marketplace, become well-known to the relevant sectors of the public, and have in fact been used as trade names.

When others later use such well-known abbreviated business names without permission in such a way as to be likely to cause confusion in the market among relevant sections of the public Art.5, Cl. 3 of the Unfair Competition Law governing the legal protection of the corporate names shall apply. For this reason, the appeal was rejected and the judgment of the court below was confirmed.

A more recent case, which also dealt with such conflicts, arose between Chengdu Huamei and Shanghai Huamei. In 2017, Chengdu Huamei sued Shanghai Huamei, on the grounds that: (1) Shanghai Huamei had been using the trade name ‘Huamei’ without Chengdu Huamei’s authorisation, thus committing acts of unfair competition; and (2) Shanghai Huamei had infringed Chengdu Huamei’s exclusive trade mark rights by frequently and prominently using phrases such as ‘Huamei’, ‘Shanghai Huamei’, ‘Huamei Dental’ and ‘Huamei Plastics’ in their business premises. In this case, however, he decision of first instance, subsequently upheld on appeal was that:

“Merely having an identical trade name would not lead to the conclusion that Shanghai Huamei committed unfair competition or acted as a free rider. Secondly, most of the uses of ‘Huamei’ or ‘Shanghai Huamei’ for publicity purposes fell within the scope of fair use of Shanghai Huamei’s own trade name. However, when it came to the use of the signs containing ‘Huamei Dental’ ‘Huamei Plastics’ and ‘Shanghai Huamei’ that were similar to the trade marks at issue, the court found that it could easily cause confusion among members of the public and thus amounted to trade mark infringement”

Dreyfus can assist you in the management of your trademarks portfolios in all countries of the world. Do not hesitate to contact us.

Audiovisual works: the protection of program titles by trademark law

Written by Dreyfus02/09/2019

Companies which specialise in the audiovisual sector often require protection for their program titles through trademark law. If granted, this protection obviously offers considerable advantages for the company, but it is necessary to take into consideration some limits to it.

The advantages of trademark protection

First, the term of protection of a title by trademark law. Trademark law initially grants protection for 10 years, but this term is renewable indefinitely (Art L712-1 CPI). Thus, provided the owner submits a renewal application within the time limit, the trademark can be protected indefinitely. Copyright, on the other hand, can grant protection up to 70 years after the death of the author of the work, but the ‘guarantees’ of protection may be less obvious than trademark law because there is no register of copyright.

On the other hand, while copyright imposes a condition of originality (Art.L711-2 CPI), trademark law requires a distinctive character (Art L711-2 CPI). Thus, if the title of TV show or audiovisual program is distinctive and acts as an indicator of origin, it may be protected. In contrast, for copyright, it is necessary to prove originality, which is more difficult to prove. Since copyright is not subject to registration, the condition of originality must always be demonstrated in the course of a dispute. Thus, copyright protection is never certain.

A title may be protected by trademark law if it does not directly designate the goods and services for which registration is sought. Thus, if the title is arbitrary, there is nothing to prevent the title from benefiting from this protection. Finally, it should be borne in mind that trademark protection is not an impediment to copyright protection; it is thus possible to combine both protections.

The limits of trademark protection

Some limitations to the protection of audiovisual programs’ titles by trademark law should nevertheless be noted. The protection conferred by trademark law grants a monopoly on the use of the registered terms (Art L-713-1 CPI) and therefore the right to oppose use by third parties. However, in order to do so, it is necessary to prove :

The use of the sign by a third party “as a trademark”

First, it must be proven that the use of the title by a third party was “as a trademark”. To illustrate this concept, we can refer to the judgment rendered about the series “Le Bureau des Légendes”. In this case, the Paris Court of First Instance (TGI) dismissed the infringement action brought against a book, using the title, devoted to the study of the series. The purpose here was not to offer goods and services designated in the registration, but simply to refer to the series as such (TGI Paris, réf., April 16, 2018, n°18/53176). Use as a trademark would have been in the context of the sale of derivative products in connection with the series.

A commercial use of the sign

Secondly, in order to oppose the use of a sign, the owner must provide proof of commercial use. This means that it is not sufficient to prove merely a reference to the title. The use must take place in the course of business and not only for illustrative purposes. There must be a genuine commercial link between the sign and the use made by a third party.

A risk of confusion in the mind of the public

Finally, the risk of confusion in the public mind must be shown. The use of the sign must raise doubts as to the origin of the goods and services offered. A trademark is intended to guarantee in particular the origin of the goods and service. Thus, the use of the sign by a third party must infringe this guarantee of origin, severing the direct link between the sign and its owner.

For instance, the judges considered that there was no likelihood of confusion between Canal+’s trademark “LE ZAPPING” and the trademark “LE Z#PPING DE LA TELE”. In view of the evidence provided, and the overall impression, there was no likelihood of confusion. The phonetic and visual differences of the two signs were sufficient to eliminate this risk (CA Versailles, 12th ch., July 3, 2018, n°18/02091).

However, the principle of speciality of the trademark may be used against the owner of a trademark. Since a trademark is registered for specific categories of goods or services, the owner can only oppose the use of the sign for identical or similar goods or services. Thus, if a sign is used for a completely different area of activities, the owner will not be able to oppose this use of the sign. This was the case for Canal +, concerning its mark “LE ZAPPING”. The notoriety of this brand was certainly recognized by the Court, but only in the field of television broadcasts. Thus, it was not possible for Canal + to oppose the filing of a similar trademark for other categories of goods and services than those designated in registration of the trademark “LE ZAPPING”.

Conclusion

Trademark law grants additional protection to a title of an audiovisual program. It complements the protection that copyright can grant, in a more certain way through the requirement of registration. The point of filing a sign representing the title of an audiovisual work is therefore to acquire double protection, on both grounds. Admittedly, the conditions to be met in order to be able to bring an infringement action under trademark law may be difficult to achieve. Nevertheless, trademark law offers more means of action, and therefore of compensation for damage in the event of unjustified use by third parties.

Dreyfus law firm, expert in trademark law, will assist you in the management of your trademark portfolio.

The EU cybersecurity certification Framework

Written by Dreyfus30/08/2019

Cyber-attacks are on the rise, and they are becoming more sophisticated. Our current business model is globally interconnected; commercial transactions and even social life transcend national borders. Consequently, our vulnerability to cyber-attacks has been increased, however, the competences of the cyber security and police authorities, as well as political responses, are predominantly national.

This situation has made European authorities aware of the need to deal with these threats in an effective and coordinated way, relying their actions on policies dealing specifically with cybersecurity within the European Union. By means, the aim is thus to improve cooperation, exchange of information and coordination between the Member States and the institutions, bodies, offices and agencies of the Union.

The European Commission, as part of the Digital Single Market Strategy, has approved Regulation No. (EU) 2019/881, on ENISA (the European Union Agency for Cybersecurity) and on certification of information and communications technology cybersecurity, which came into force on June 27, 2019.

This new regulation has two main objectives. On the one hand, to give ENISA (the European Agency for Cybersecurity, now named the European Union Agency for Cybersecurity) a greater role in the field of cybersecurity, establishing a series of objectives and tasks. On the other hand, the creation of a common certification framework at European level, with the aim of guaranteeing an adequate level of cybersecurity of ICT products, services and processes in the EU, avoiding the fragmentation of the internal market.

Concerning the first objective, the first substantive point of the Regulation is to give more powers to the European Union Agency for Cybersecurity (ENISA). It will now have a permanent mandate facilitating the exercise of the new functions assumed, one of which is to increase cooperation on cybersecurity within the Union, for example in cases of large-scale cyberattacks or cross-border crises. This strengthening is also reflected in the economic resources for ENISA, increasing from 11 to 23 million euros over a period of five years.

It is noteworthy that European regulation focuses on users by addressing concepts such as users’ awareness, and the application of good practices online. Both public bodies and private stakeholders will receive recommendations on safe configurations and maintenance of their devices, and the availability and duration of updates, as well as the perceived risks.

With regard to the second objective, the regulation creates a framework for European Cybersecurity Certificates for products, processes and services that will be valid throughout the EU. It is the first EU legislation on the internal market to take up the challenge of enhancing the security of connected products, Internet of Things devices and critical infrastructure through such certificates.

The creation of the cybersecurity certification framework incorporates security features in the early stages of their technical design and development (security by design). It also enables their users to ascertain the level of security assurance, and ensures that these security features are independently verified.

As to the second objective of the regulation, the certification framework will provide EU-wide certification schemes as a comprehensive set of rules, technical requirements, standards and procedures. This will be based on agreement at EU level for the evaluation of the security properties of a specific ICT-based product or service, for instance, smart cards. This will certify that ICT products and services which have been certified in accordance with such a scheme comply with specified requirements. In particular, each European scheme should specify: a) the categories of products and services covered, b) the cybersecurity requirements, for example by reference to standards or technical specifications, c) the type of evaluation such as self-assessment or third party evaluation, and d) the intended level of assurance for instance, basic, substantial and/or high.

ENISA’s mandate is immediate from the entry into force of the Regulation, whereas the cybersecurity certification framework will have to be developed. In this respect, the Commission’s agenda has already included the submission of proposals to ENISA for the preparation of certification projects, as well as the creation of expert groups on cybersecurity.

Finally, this European regulation not only seeks to increase users’ confidence in the use of connected devices, but also to strengthen the European cybersecurity industry and the European Single Market, positioning it as a global benchmark, in line with other markets such as the United States or China.

With significant expertise in protecting innovative products and designs, and in defending intellectual property rights on the Internet, Dreyfus is well positioned to assist you in enhancing your assets on the web.

The « Copyright in the Digital Single Market » Directive: transposition is on the way!

Written by Dreyfus28/08/2019

Protecting authors’ rights is a necessity in the digital age, as information flows more and more easily. That is why the European Commission reported in September 2017 that it was necessary to tackle illegal online content, while the French legislature has already transposed several European directives and has modified its literary and artistic property law.

In this respect, a great deal has been written by the Directive 2019/790 (EU), adopted on 26 March 2019 by the European Parliament. Among its 30 articles, we count in particular the establishment of a related right for press publishers (Article 15) and an obligation for platforms to control hosted content (Article 17). These provisions have been fiercely debated, and have led to multiple lobbying campaigns by authors and performers, newspaper publishers, and web giants (Google, Facebook and YouTube). In the present article, we will examine the changes made by the Directive.

New exceptions to copyright

There are currently many exceptions to copyright. In that respect, the Directive introduces three new exceptions to author rights and related rights in the digital environment. These exceptions and limitations are:

– Text and data mining for the purpose of scientific research when carried out by research organisations and cultural heritage institutions. However, rightholders are allowed to put in place technical measures aimed at ensuring the security and integrity of the networks and databases where their works are hosted. They may also expressly reserve their rights “in an appropriate manner”, for instance by machine-readable means, such as a digital watermark (Articles 3 and 4);

– The use of works in digital learning activities including distance learning. States may, however, provide a fair compensation for rightholders (Article 5);

– The copying by cultural institutions, for conservation purposes, of works which are part of their permanent collections (Article 6).

French law already provides similar exceptions in the article L. 122-53°) e) 8°) and 10°) of the French Intellectual Property Code, but this is not necessarily the case for all member States.

Under both French law and the Directive, these exceptions must be strictly interpreted and require that the work has been lawfully published.. All the conditions required by law must be met in order to benefit from these exceptions without having to obtain the author’s prior consent..

Furthermore, these new dispositions do not modify existing limitations and exceptions, such as parody or short quotation, which are retained (Article 17 (7) of the Directive). However, Member States will now have to specify that reproductions of visual works of art in the public domain cannot be protected by copyright unless the reproduction itself is original enough to be protected (Article 14). In France, this clarification is a mere application of copyright: a work in the public domain is no longer protected by author rights. Consequently, it can be freely reproduced without authorization. By contrast, if the production is original, it becomes a work on its own right and, as such, can be protected.

Licenses: out-of-commerce works, audiovisual video-on-demand works and collective management

The article 8 of the Directive authorizes collective management organisations to conclude non-exclusive licenses for non-commercial purposes with cultural heritage institutions for exploiting (reproducing, distributing, etc.) out-of-commerce work which are in their permanent collections.

According to Article 8 (5) of the Directive, a work is out-of-commerce: “(…) when it can be presumed in good faith that the whole work or other subject matter is not available to the public through customary channels of commerce, after a reasonable effort has been made to determine whether it is available to the public.”

Such licenses do not require prior mandate from the rightholder, but the collective management organization must be sufficiently representative of rightholders. The owner may, however, exclude at any time his works from this licensing mechanism, whether this exclusion is general or specific. In addition, the moral right to authorship of the work must be respected by indicating the author’s name, “unless this turns out to be impossible” (Article 8(2)).

Therefore, there is a switch from a prior authorization regime to an implied consent regime, and this will require greater vigilance on the part of authors and rightholders.

In France, article L. 134-4 of the French Intellectual Property Code already gives authors of out-of-commerce books the right to oppose to their exploitation.

Article 12 of the Directive provides that States may authorize collective management organizations to extend collective licenses to rightholders who have not authorized the organization to represent them.

Here again, the organization must be sufficiently representative of rightholders, and they in turn may exclude their works at any time from this licensing mechanism.

Furthermore, article 13 of the Directive provides for a negotiation mechanism in which “an impartial body or of mediators” will be in charge, in order to assist in the conclusion of licensing agreements “making available audiovisual works on video-on-demand services”.

The related right of press publishers

Article 15 of the Directive creates a related right for newspaper publishers established in a Member State. They can now be remunerated for use of their content by information service providers, in particular news aggregators. This right is subject to strict conditions of application and does not apply to :

– Private and non-commercial uses;

– Hyperlinks;

– Use of isolated words or very short extracts of a press publication;

– Works published for the first time before the Directive’s entry into force.

Moreover, this right is only granted for two years from January 1st of the year following the date on which that press publication is published.

This related right is a right of its own, and thus publishers no longer have to demonstrate they indeed own the economic rights transferred to them by the author of the work.

Part of the remuneration paid by service providers to newspaper publishers must be paid to the authors. However, the Directive does not specify how this payment must be carried out. In addition, authors can exploit their works independently of press publication.

Online content-sharing service are fully responsible (Article 17)

In France, platform operators enjoy the protective status of article 6-I-2 of the law “for confidence in the digital economy” n° 2004-575 of 21 June 2004. They are not

liable if they “promptly” remove the content at stake.

Platforms will now be liable if they communicate to the public without authorization works protected by copyright. However, they will be exempt from liability if they have:

– “Made best efforts to obtain an authorization” from rightholders;

– “Made best efforts” to ensure the unavailability of the work and

– Acted “ expeditiously” to disable access to the work or remove it from their websites after receiving a « sufficiently substantiated notice” of the rightholders.

Compliance with these requirements will be examined with regard to the type, audience, and size of the service, as well as the type of works downloaded. Article 17 (8) specifies that platforms are not subject to any general monitoring obligation, but its paragraph 4 (b) requires that they provide their “best efforts”, “in accordance with high industry standards of professional diligence”, to ensure the unavailability of protected works, which seems to be a sneaky way to require automatic content filtering.

Platforms that have been in service for less than three years, and which have an annual turnover of less than €10 million, will benefit from a less restrictive liability regime, as they will only have to make their best efforts to obtain an authorization and will have to act promptly upon receipt of a “sufficiently substantiated notice” from a right holder.

Furthermore, all platforms will be required to put in place an “effective and expeditious complaint and redress mechanism” so that users can challenge blocking or removal of a work posted online. States must also provide for alternative dispute resolution procedures.

Finally, it should be noted that authors and performers will now have to be remunerated in an “appropriate and proportionate” manner (Article 18). They must receive, at least once a year, information on the exploitation of their works (transparency obligation provided for in article 19). Contracts which are already concluded should be adapted to provide for an “additional, appropriate and fair remuneration” (article 20). Article 22 of the Directive also gives authors a right to revoke a license or a transfer of rights. These measures already exist in French law, but the Directive will harmonize European law.

The next step is the transposition of these provisions, which must be done by 21 June 2021 at the latest. France, which supports this text, should proceed with this transposition next summer. A proposal for a law on related rights with regard to press articles is already under consideration.

These developments are to be monitored…

Extension of the contract between the EURid and the European Commission: the Brexit influence

Written by Dreyfus23/08/2019

On March 29, 2019, the registry in charge of <.eu> domain names (EURid) announced the extension of its contract with the European Commission until October 12, 2022 under the Regulation (EU) 2019/517 of March 19, 2019 (“the 2019 Regulation”).

With one exception, the provisions of the 2019 Regulation will apply starting October 13, 2022, and repeal the Regulations (CE) 733/2002 and (CE) 874/2004. The exception is that the provision concerning eligibility criteria under Article 20 of the 2019 Regulation will apply from October 19, 2019. This provision allows any person holding European Union citizenship, regardless of country of residence, to register a <.eu> domain name.

The purpose of this new regulation is to adapt the rules governing the <.eu> ccTLD to the expansion of the domain names sector. In this regard, the EURid’s annual report shows a steady increase in registrations in six countries including Portugal, Ireland and Norway. Nevertheless, the uncertainty caused by Brexit led to a loss of 130,000 domain names for the 2018 period. This decrease is mainly due to the anticipation of registrants who face the impossibility of registering or renewing their <.eu> domain names in the near future.

This brief was published in the July-August 2019 issue of the French magazine “Propriété industrielle”.

An employee refuses to transfer domain names wrongly registered in his own name

Written by Dreyfus22/08/2019

WIPO, Arbitration and Mediation Centre, March 15, 2019, No. D2018-2944, Théâtre du Gymnase Marie Bell SAS versus Mr. Erol Topal.

This case illustrates the need for any company to define a clear policy for managing its domain names to ensure that these domain names are registered in the company’s name and remain under its control. If this is not done the company may lose some of its rights. Moreover, if an employee registers domain names in his or her own name it could be difficult to recover these domain names.

The Théâtre du Gymnase Marie Bell, commonly known as the “Théâtre du Gymnase”, was registered in 1958. It is a Parisian performance hall which was classified as a historical monument in 1994.

In 2004, one of its employees registered the domain name <theatredugymnase.com> in his own name, but allegedly on behalf of the company. In addition, in 2018, he registered four other domain names that include all or part of the company’s name: <theatre-du-gymnase.com>, <theatredugymnasemariebell.com>, <gymnasemariebell.com> and <letheatredugymnase.com>.

The day after these domain names were registered, the Théâtre du Gymnase noticed malfunctions on its official website located at www.theatredugymnase.com. No information was being displayed, not even the performances scheduled.

On October 25, 2018, the theatre fired the employee, on the grounds of his refusal to provide the codes to manage the official website. Subsequently, formal letters were sent but there was no response to these.

The Théâtre du Gymnase then filed a UDRP complaint seeking the transfer of the domain names.

The respondent, (now a former employee of the company) said that he retained the names because proceedings before the Labour Court were pending. He also claimed to have registered and managed a number of domain names for the complainant, without ever getting paid. He stated that in August 2018 an invoice of 36,000 euros was sent to the Théâtre, which acknowledged the due amount and indicated its intention to pay. However, the respondent has not received any payment because proceedings before the Labour Court were subsequently initiated.

Initially, the expert had to consider whether the complainant had trademark rights in its name, because ownership of a trademark is necessary to bring a successful complaint under UDRP. Although the name “Théâtre du Gymnase Marie Bell” is not registered as a trademark, the company claimed to have rights in it, particularly due to its use as a company name, trade name and brand. The Expert therefore considered that the use of this name is such that the complainant enjoys unregistered trademark rights, (on which a complaint may be based). Therefore, the likelihood of confusion between the disputed domain names and the complainant’s prior rights could be recognised.

Regarding the question of the respondent’s rights or legitimate interest or bad faith use of the domain names, four of the disputed domain names were registered on the eve of the malfunctions of the complainant’s web site, after which it was discovered that only the respondent had access to site management and refused to provide the complainant with the codes that would allow such access.

In addition, these four domain names pointed to what appeared to be the site of a Turkish specialty restaurant, and the other pointed to what appeared to be the official website of the Théâtre du Gymnase, but which indicated that there would be no performance whereas the new official website accessible at the address “www.theatredugymnase.paris” showed performances were ongoing.

Thus, the expert noted that the use made of the disputed domain names disrupted the claimant’s activities.

For these reasons, the transfer of the names to the Théâtre du Gymnase, was ordered without prejudice to the decision that will be made by the Labour Court.

Although this is a case of “all’s well that ends well” for the Théâtre du Gymnase matters might have gone differently. If for example the expert had taken the view that this was a dispute over payment of an invoice legitimately incurred by the respondent in compliance with the complainant’s express wishes, the decision could have gone differently. The existence of a clear, unambiguous domain name policy should leave no room for doubt whether an employee is acting within defined guidelines or is acting contrary to an employer’s guidelines – and therefore is clearly in bad faith. Consequently, this case reflects the importance of establishing a naming policy internally, setting clear rules and best practices for the registration and management of trademarks and domain names, in order to avoid disruption and potential asset loss.

The pseudonym: what protection?

Written by Dreyfus20/08/2019

As an Alias adopted to preserve anonymity, the pseudonym is frequently used in the public sphere for commercial purposes. This can be, for example, the pen name of an author, the identity under which a painter is known, etc.

French law does not provide any legal status for the pseudonym. However, it is recognized as a right of personality. As such, it enjoys an existence and legal protection.

When the pseudonym is intended for public use, the choice requires particular attention. Therefore there are limits established by law which must be respected. Thus, the pseudonym chosen must not violate public order or morality. The existence of prior rights, such as a registered trademark or prior use of the same pseudonym by another individual, is also a limiting factor.

In addition, Article L. 711-4 of the French Intellectual Property Code states that a sign may not be adopted as a trademark if it infringes an earlier right. These earlier rights include the personality rights of another person, particularly his surname, pseudonym or likeness.

The pseudonym may not only constitute an earlier blocking right for a trademark but may also be registered as a trademark. This has two consequences:

– the need to check whether the pseudonym infringes apreviously existing pseudonym used commercially

A pseudonym used in the private sphere raises few problems in practice. The same applies if it is used for a limited period of time. If it is not intended for commercial use, it is not necessary to check the existence of any previous use by a third party.

– the protection of a pseudonym may be increased if it is registered as a trademark

Registering a pseudonym as a trademark provides better protection. This registration also leads to its becoming an intellectual property asset in its own right and therefore increases its value. This provides security for the user of the pseudonym as well as for his business partners. It is then easier to carry out commercial operations using this pseudonym (assignment contracts, licensing, marketing operations, etc.)

Dreyfus can assist you in the registering of your trademarks in all countries of the world. Do not hesitate to contact us.

Fashion ID & Facebook : a joint liability subject to debate

Written by Dreyfus13/08/2019

Like many digital players, Fashion ID inserted a Facebook “Like” button on its website. This plug-in automatically collects and transmits to Facebook the personal data of the website users, whether or not they click on the button, and whether or not they have a Facebook account. This process takes place without any control by the website operator. Arguing that users’ rights are being infringed, a consumer association brought an action before the German court in order to stop this infringement. On 20 January 2017, the competent trial court referred several questions for a preliminary ruling to the Court of Justice of the European Union (CJEU). The main question is whether the integration of this “Like” button is sufficient to make Fashion ID a ‘data controller’ (jointly with Facebook), for the purpose of Directive 95/46/EC of 24 October 1995, which has now been replaced by the General Data Protection Regulation of 27 April 2016 (GDPR).

Although the Court must rule on the notion of joint liability and the consequences of such liability in the light of Directive 95/46/EC, which has now been replaced by the GDPR. Both texts define the data controller in the same way. As a result, the scope of the CJEU decision will most likely go beyond the present case. Aware of the stakes involved in this future decision, Advocate General Michel Bobek, in his Opinion of 19 December 2018, expressed his support for joint liability between Fashion ID and Facebook.

In the past, the CJEU has already recognised the administrator of a Facebook page as a data controller who had freely chosen to host the page on Facebook and therefore could set up the statistical processing carried out by the social network (CJEU, “Wirtschaftsakademie”, 5 June 2018, C-210/16). The Court also said that this liability might be retained even if no direct processing is carried out by the page administrator (CJEU, 10 July 2018, “Jehovan”, C-25/17). The CJEU has therefore adopted a broad understanding of the notion of joint liability.

In his Opinion, Advocate General Bobek has invited the Court to reduce the scope of joint liability in order to better identify the liability of each involved. He considers that extending the notion of data controller to any third party allowing the processing in any way would actually dilute the liability, making the protection of individuals less effective. For this reason, he proposes to link the definition of data controller with the purpose of the processing operation, which must be unique in its means and purpose.

This approach requires splitting the processing into as many subprocesses as there are purposes to get to the part in which the website operator exercises effective control. This approach would limit the website operator’s liability to the processing phase for which he is actually responsible and would not include subsequent processing operations beyond his control. In this instance, Facebook and Fashion ID pursue a commercial and advertising purpose. Therefore, Facebook should be solely liable for processing operations carried out after the data collection, while Fashion ID’s liability would be limited to the collection and transmission of such data. However, this solution proposed by the Advocate General has several disadvantages.

Thus, reducing the notion of purpose to the functions of the processing, (i.e. the technical operations of collection), conceals the advertising purpose. However, users should be able to anticipate this. The processing cannot be examined as a whole and an analysis of its compliance with regard to the consequences for the persons concerned is not possible. In the end, adopting this narrow approach would exempt website operators from requiring the disclosure of information from their operating partners that would effectively inform users, because the different data controllers involved would not be required to know the processing operations carried out by their partners.

Indeed, a data controller could try to evade responsibility by arguing his actions did not cause damage and try to put blame on all others who have beeen held to be joint data controllers. Such presumption of solidarity could be considered if the provisions of Article 26 GDPR (requiring joint controllers to transparently determine responsibilities) are not met.

Moreover, the Advocate General does not address the question of cascading responsibilities. Indeed, in the case of multiple data controllers, a new division of the processing operation would have to be carried out under this solution. For example, if Facebook provides data to a partner, the company will have limited liability and it would be up to its partner to enforce the GDPR.

An extensive interpretation of joint liability in cascade would force operators to identify the relevant mechanisms for ensuring respect for the rights of individuals.

The choice of an extensive or restricted interpretation of joint liability now rests with the CJEU. Its decision is therefore highly anticipated since it will have a direct impact on website publishers and the protection of private individuals’ personal data.

Dreyfus assists its clients worldwide in their strategies to protect and defend their rights on the Internet. Do not hesitate to contact us!

Towards the protection of culinary creations by certificate?

Written by Dreyfus09/08/2019

To the delight of our taste buds, flavors and gourmet creations are part of our daily lives, but from a legal perspective, the situation is more delicate and the flavor more bitter. Indeed, there is a consensus on the need to protect culinary creations but intellectual property law currently offers only peripheral protection.

As we saw in a previous article, cooking recipes can be protected by author rights, the aesthetics or visual appearance of the creation is covered by designs, innovative techniques used in the creation may give rise to patent protection and the name can be registered as a trademark. None of these solutions protect the actual creations themselves. In addition, certain conditions must be met, which may not reflect practice. Under these circumstances, the most appropriate solution is usually author rights protection, which is intended to protect an original creation regardless of its form of expression (Article L. 112-1 of the French Intellectual Property Code). Nevertheless, the Court of justice of the European Union (ECJ, 13 November 2018, “Levola”, C 310/17) has refused to protect flavors in this way. The French Cour de Cassation has adopted a similar position on fragrances (Cass. Com., 10 December 2013, n°19872). In short, when it comes to culinary creations, the law remains speechless.

In order to fill this legal void, several deputies have submitted to the National Assembly a bill about the protection of recipes and culinary creations, on April 30, 2019.

The main purpose of the text is to clarify the situation of traditional recipes on one hand and culinary creations on the other hand.

Thus, the creation of a new institution, the “Fondation pour la gastronomie française”, is envisaged. This private non-profit legal entity would be in charge of listing and protecting traditional recipes in order to identify restaurateurs who respect them. The aim is to promote the knowledge, conservation and enhancement of French gastronomy as well as reassuring consumers.

Moreover, the bill provides for the creation of a public institution, the “Institut national de la création culinaire certifiée” (INCC), to ensure the protection of culinary creations. The INCC would issue a new industrial property title, the certificate of culinary creation, to provide protection for a period of 20 years. A hybrid between author rights and industrial property rights, this title includes economic rights as well as three moral rights (right of disclosure, right to the name, right to respect for culinary creation).

The conditions for granting such a certificate are:

the creation must be new with respect to the state of the culinary art;
the existence of a creative activity, not resulting in an obvious way from the state of the art for a skilled person;
an own gustatory character.

The bill excludes from protection a number of productions such as creations involving elements of the human body, narcotics or creations violating public order. The text also provides a specific regime for employees’ creations, close to the one existing in author rights, as well as an opposition procedure lasting two months from the publication of the application for the grant of a culinary creation certificate. Unsurprisingly, any infringement to this new property right would constitute an act of counterfeiting.

This bill, being a combination of trademark law and author rights, is not convincing. The Chefs themselves do not appear to be asking for such protection and the measure will probably mainly benefit the food industries. The bill has now been referred to the Committee on Cultural Affairs and Education. This is a case to follow.

Specializing in intellectual property, Dreyfus will know how to create the perfect recipe to enhance and protect your rights. Do not hesitate to contact us!

Generic trademarks: good practices to avoid ‘genericide’

Written by Dreyfus09/08/2019

Protecting intellectual property assets is a major concern of companies. Trademarks are a subject of immediate interest, because they allow consumers to associate products and/or services with a specific company. The company is therefore more easily recognized and is more likely to see customers buy its products.

Once a trademark has been duly registered, a company can start to exploit it. That is when we must be most vigilant. Indeed, a trademark may lose its distinctiveness after its registration, by becoming a generic trademark.

What is a generic trademark?

Put simply, a generic trademark is one that has become “The common name in trade for a product or service” One of the main criteria for the validity of a trademark is its distinctiveness (Article L. 711-2 of the French Intellectual Property Code). Under the article L. 714-6 of the French Intellectual Property Code, a generic trademark is devoid of distinctiveness because it has become “The common name in trade for a product or service”.

In other words, a generic trademark is a trademark that has become a common term for a type of product or service. It is used by both consumers and competitors of the trademark to refer to the product or service no matter by whom it has been provided. As a victim of its success, the trademark no longer enables consumers to identify products and services as coming from the company concerned. It falls therefore into the public domain.

As such, the company that created the trademark loses its exclusive right of exploitation. It will no longer be able to oppose the use of its trademark by third parties who seek to use it as the descriptive or ‘generic’ name of the product or service for which it has become famous. This is called genericide of a trademark.

Under the aforementioned article L. 714-6, an action for revocation or cancellation for genericide of a trademark that became generic requires two conditions:

– the trademark must have become the common name of the product or service;

– such use must be caused by the trademark owner, namely mostly his inaction.

Hence, the need for a company to act effectively against any use of its trademark as a generic term. If the owner acts effectively against any generic use, the trademark will continue to be protected by law.

Good practices to prevent a trademark from becoming generic

Acting before any commercialization, is the most effective way to prevent a trademark from becoming generic. It is also advisable not to misuse the trademark later on.

If you have created a totally new product or seek to become a brand leader in a new market, it is imperative to create – or use -a term to designate the new product, as there is a strong risk of confusion between the trademark and the product. For example, Apple’s trademark is iPhone, and the product to which it is applied is a “smartphone”. Similarly, if a generic term exists but is particularly complex, it is useful to provide a simpler term, where your trademark is the market leader. It is also recommended to use the term defined in this way in agreements with third parties (e.g. letter of commitment, coexistence agreement, etc.).

In addition, the trademark must be used correctly in all circumstances, both externally and internally.

The use of the trademark must be particularly monitored during advertising campaigns. The trademark should be distinguished from the surrounding text promoting the marketed product or service by placing it in BLOCK LETTERS or, by Capitalising the first letter.

Using the trademark as a noun makes it more likely to be confused as the generic name. This practice should be discarded in favour of using it as an adjective. For example; “a Kleenex handkerchief” rather than “a Kleenex”.

Another good practice is to use the ® symbol or the ™ symbol. Although the latter have no legal value in France unlike in the United States, their use on the market is common. Promoting the trademark as an asset belonging to the company discouraging its use as a common term.

A trademark becomes generic mainly because of its misuse by the public. This misuse is not necessarily the result of an intend to harm. As such, it is recommended to carry out advertising campaigns aimed at consumers promoting correct use in order to avoid misuse. Preparing written standards defining the correct use of the trademark that can be easily distributed to third parties (licensees, consumers, etc.) also participates to this public education.

Avoiding misuse of the trademark also requires protection against abusive use of the trademark by third parties. It is therefore necessary to monitor product and service descriptions for new trademark applications and press publications mentioning the trademark.

Finally, because a trademark may be declared generic as a result of the owner’s actions or lack of action, it is in the company’s best interest to ensure that it can prove that it has taken steps to avoid the trademark becoming generic. In this respect, marketing files (advertising costs, unsolicited mentions in the press, etc.), letters of formal notice, summonses or even court decisions are all evidence to be kept.

In short, a potentially generic trademark remains protectable under trademark law if its owner has enforced actions against its misuse and gathered supporting evidences to prove that extent.