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Disputes regarding domain names and : it is now possible to act before the WIPO Mediation and Arbitration Centre.

Written by Dreyfus09/08/2019

The China Internet Network Information Center (CNNIC), registry of the <.CN> and <.中国> ccTLDs, has designated WIPO to provide dispute resolution services under the China ccTLD Dispute Resolution Policy. Disputes in relation to these ccTLDs may be filed with WIPO from August 1, 2019.

The <.CN> Policy is ONLY applicable to <.CN> and <.中国> domain names that have been registered for less than three years.

This Policy applies to <.CN> and <.中国>domain names that are identical or confusingly similar, not only to a mark, but to any “name” in which the complainant has civil rights or interests (.CN Policy, article 8(a)), whereas the UDRP is limited to the protection of trademark rights.

It is sufficient for the complainant to prove that either registration or use of the disputed domain name is in bad faith, whereas the UDRP requires the complainant to prove both elements.

The appeal jurisdiction belongs to the Courts of China or the arbitration Chinese institution, and the proceedings language will be Chinese (unless otherwise agreed by the parties or determined by the Panel).

This adds to the over 75 other ccTLDs for which trademark owners can rely on WIPO’s dispute resolution services.

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Spain: Proof of use of the trademark, a new mean of defense in opposition proceedings

Written by Dreyfus09/08/2019

On April 30, Spain finalized the reform of its trademark law, started in late 2018. From that date, the Royal Decree 306/2019 of 26 April 2019 amending the Regulations under Spanish Trademark Act 17/2001 entered into force.

 

The possibility to request proof of use in defense in opposition proceedings is one of the main innovations introduced into Spanish law by the 2018 reform. The European Union already provides for such a means of defense in article 47 of the European Union Trademark Regulation (EUTR). Thus, this reform of Spanish law is part of the welcome European harmonization.

 

The Royal Decree 306/2019, under discussion, establishes how this new defense will be implemented.

 

Thus, from now on, proof of use may be required for all opposition proceedings filed since May 1, 2019.

 

This mean of defense can be invoked against Spanish trademarks and trade names and against international trademarks designating Spain. However, not all prior right can be contested. To be challenged, the prior trademark or trade name must have been registered for at least five years. The holder of such prior rights will then have the burden of proof of the actual exploitation of the rights claimed.

 

If the evidence provided is insufficient, then the opposition request will be rejected. The relevant prior right or the existence of a likelihood of confusion will not be taken into consideration for the resolution of the dispute.

 

In this respect, the documents provided as evidence must refer to the goods and/or services for which the prior right is registered. If the opposition is based on part of the goods and/or services, then the right holder must provide the proof of a genuine use only for those goods and/or services. The supporting evidences must establish the real and serious exploitation of the prior right. This exploitation is established when products and/or services are offered for sale and put into the market.

 

The documents communicated must indicate the place, date, extent and nature of the sign’s use. For example, that may be catalogues, brochures, invoices, labels, advertisements, etc. Items provided by third parties constitute concrete and independent evidence. As such, their probative value is higher than the value given by the prior trademark owner’s evidence.

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The dispute resolution policy which governs the domain has extended the term within which action may be taken from 2 to 3 years.

Written by Dreyfus09/08/2019

On March 2017, the new General Civil Chinese Law Rules extended the general limitation period for civil actions from 2 to 3 years.

Since then, many recommendations have been made about the need to change the China Internet Network Information Centre (CNNIC) dispute resolution policy which barred action against a <.cn> domain name which had been registered for more than two years to accord with the one established under the Civil regulation.

The CNNIC developed its first domain name dispute resolution rules in 2000, and following the provisions under the General Civil Law Rules of People’s Republic of China, in force at that time, set a term of 2 years following registration within which action had to be taken.

The CCNIC  was established June 3, 1997 who is the registry for domain names in China.

Indeed, the China Dispute Resolution Policy (CNDPR) is the only dispute resolution policy which sets a time limit within which to admit complaints about domain names.  This 2 year time-bar has been seen as an effective barrier to challenging any <.cn> registrations, because after the 2 years period, the only possibility was either to negotiate or attempt court action. Fortunately, in order to align the CNDPR time limit for action to the General Civil Law rule, it has been reviewed and extended to 3 years. This was implemented on 18 June 2019, and provides more flexibility to complainants to initiate alternative dispute resolution proceedings against domain names in the <.cn> name space.

Despite this good news there are still some unanswered questions; in particular whether the change to the new term has retroactive effect, or will apply only to those domain names registered after the change in the policy became effective.

 

To be continued…

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Key points from the ICANN 65 meeting in Marrakech

Written by Dreyfus07/08/2019

The 65th international meeting of the ICANN took place in Marrakech, from the 24th to the 27th of June 2019. Several topics have been discussed such as the new gTLDs issues, the compliance between ICANN procedures and the GDPR provisions and the review of the rights protection mechanisms.

 

  • Future new gTLDs issues

 

Recently, ICANN faced an increase in the number of applications for top-level domains (gTLDs). In 2012, almost 2000 applications for new gTLDs were submitted to ICANN. At the end of this first round, more than 1000 gTLDs were created, for instance the <.brands>. ICANN awaits similar applications for the next round, which should take place in 2022.

 

Thus, new strategies have to be implemented to handle with those requests. At first ICANN foresees establishing priorities, based on the new gTLDs applications, to make the process more efficient. This process could be opened every year for a period of 4 months. However, ICANN could seek to limit the number of applications to 1000 per year.

 

Furthermore, TLDs with 2 characters will be permitted under the new process if these are composed by one letter and one number. Nevertheless, singular and plural versions of the same extensions are likely to be banned as coexisting gTLDs in the future.

 

On the other hand, ICANN’s Governmental Advisory Committee (GAC), specifically mentioned the <.amazon> issue in its report dated on 27 June 2019.

The ICANN Board had authorized the use of this gTLDs whereas several GAC members had expressed their concerns about the risk of the Amazon case becoming a precedent and expressed concern that a mutually acceptable solution had not been achieved. The GAC has requested ICANN Board to formulate its grounds for its approval. In addition, several South American governments object to its use.

 

  • GDPR and EPDP

 

The Expedited Policy Development Process Working Group (EPDP) implemented a compliance policy in regard to the GDPR, on March 2019. In our article about ICANN 63, we explained that when the GDPR came into force, it would produce several effects on the Whois protocol. For instance, personal data will no longer be accessible to the public. The EPDP has now to develop a unified access system centralizing protected data, based on the legitimate interests of IP owners.

 

Furthermore, some details about the Registration Data Access Protocol (RDAP) were given in the ICANN 65. This protocol has been created to eventually replace the Whois protocol. In fact, it performs the same functions as Whois, but its aim is to standardize data access. It shall be implemented by Registries and Registrars by the 26th of August 2019.

 

 

  • Review of protection mechanisms provided by ICANN

 

The Rights Protection Mechanism (RPM) Working group is reviewing several ICANN procedures concerning gTLDs. It has developed preliminary recommendations about Sunrise and Claims periods. In the same way, some proposals have been developed to allow trademark owners to acquire a priority right to register their trademark as a domain name. In the absence of such a registration, third parties could register terms corresponding to the trademark.

 

Up to now, the first phase of the working group scheme consists in reviewing Uniform Rapid Suspension (URS) and the Trademark Clearinghouse (TMCH) mechanisms. Similarly, the UDRP procedure remains on the horizon, and the Group is expected to begin work on that in mid-2020. This will be the second phase of its work.

 

Meantime, as their work is not yet completed, we will have more information once their report is completed, which is expected to be in April 2020.

 

On the other hand, another working group was also formed to study Subsequent Procedures (SubPro) for new gTLDs. This working group confirmed its support of a User Guide, under the assumption that it becomes more precise, to make it easier to understand what gTLDs are.

 

Similarly, the SubPro working group expects to better communicate with trademark owners in order to limit the risk of counterfeiting, and to show how those new gTLDs could have a good effect on their activity.

 

Thus, ICANN 65 provided an opportunity to evaluate the work done thus far by the working groups. However, if clarifications have been made, few concrete changes have been put in place. The projects should take shape at the next meetings organized by ICANN.

 

The next ICANN meeting will take place in November 2019, in Montreal. We will continue to follow this matter closely.

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Challenge to the validity of the « three-stripes » figurative trademark of Adidas, because of a lack of distinctiveness.

Written by Dreyfus07/08/2019

According to the judgment « Adidas AG / EUIPO », T-307/17, of the 19th of June 2019, the General Court (ninth chamber) of the European Union dismissed an appeal by Adidas against the decision of the EUIPO to declare the famous « three-stripes » figurative trademark invalid on the grounds it lacked distinctive character.

 

This began when Adidas opposed the registration of the 2 stripes trademark of its competitor, Shoe Branding, who counterclaimed to have the Adidas “three-stripes” registration declared invalid on the grounds it lacked distinctive character. By a decision of  30th June 2016, the cancellation division of the EUIPO declared the Adidas registration invalid, and by decision dated 7th March 2017, the second Board of Appeal of the EUIPO upheld the original decision to cancel the Adidas trademark.

Therefore, Adidas appealed that decision to the General Court arguing that the challenged trademark had acquired distinctiveness through use. However, the Court ruled that there was a lack of inherit distinctiveness and also refused to recognise the acquisition of distinctiveness through use. In doing so, the Court said that Adidas did not provide sufficient evidence of distinctive character. According to the Court, Adidas had proved only that the necessary distinctiveness had been proved in only 5 of the EU member states.

 

It is important to remember that the distinctiveness is not established by providing evidence of sales and marketing figures for the products and services, but is judged by reference to the relevant public’s perception of the trademark. The Court said that distinctive character must be assessed, first, by reference to the goods or services in respect of which registration has been applied for and, second, by reference to the perception which the relevant public has of those goods or services. This meant that the Court considered the relevant public consists of all potential consumers of those goods in the European Union, and on the evidence filed said they would not make an obvious link between the « three-stripes » and the owner (Adidas). Although the « three-stripes » became the symbol of Adidas a long time ago the evidence filed by Adidas did not demonstrate an obvious link between the sign as registered and the products for which it is registered. There was no direct evidence the “three-stripes” as registered were actually used on the products covered in the registration. Therefore, the trademark’s distinctive character, and so its validity, could not be upheld.

 

The Court already accepted that a repetition of signs for a figurative trademark could be a valid trademark (TUE, 9th of november 2016, Birkenstock Sales/EUIPO, T-579-14 Representation of a pattern of wavy, crisscrossing lines). Nevertheless, in this case, the Court thought the trademark is composed of obvious non-distinctive elements.

 

Distinctive character can be acquired through use after registration (Com. 6th Déc. 2016, n°15-19048), but under the Directive 2008/95/CE of the 22nd of October 2008, evidence that the registration has acquired distinctive character has to be shown in each country of the European Union, (CJUE, 3rd chamber, 25th of July 2018, Nestlé SA c/ Mondelez UK Holdings & Services Ltd). Adidas was criticised for not having provided evidence covering every state of the EU. According to established case law, it is necessary to prove distinctiveness in all the states of the Union. On the other hand case law makes it clear that it may be sufficient to prove distinctive character in a substantial part of the EU dependant on the geographic importance of the states where distinctive character has been proved (CJUE, 24 of May 2012, Chocoladefabriken Lindt & Sprüngli AG c/ OHMI, C-98/11 P). Adidas could benefit from this case law.

 

Arguably, according to the Council Regulation n°207/2009, the European Court is going against the past judgments, but the decision is a necessary reminder of the need to prove distinctiveness acquired through use, in each country of the Union.

In the circumstances of this case, an appeal to  the Court of Justice of the European Union is to be expected because of the effect of this decision on Adidas, which has registered several figurative trademarks of this kind. It may also have an effect on many other trademark owners. This judgement relates only to the specific trademark registration challenged and does not directly affect the other trademarks of Adidas, nor of any other owners.

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Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel

Written by Dreyfus07/08/2019

Nathalie Dreyfus has been admitted as panelist and arbitrator in the CIRA Panel (Canadian Internet Registration Authority).

The CIRA Panel is a new Alternative Dispute Resolution Centre which belongs to the British Columbia International Commercial Arbitration Centre (BCICAC).

The main aim of CIRA is to settle disputes concerning domain names through a quick and relatively low cost mechanism, led by out-of-court arbitrators who meet certain requirements according to CIRA’s Canadian Presence.   

The process is initiated by a complaint received in the CIRA Complaint Center which locks the disputed domain. A copy of the complaint is redirected to the Registrant who has twenty days to deliver a response. If so, a Panel of experts is appointed, whereas if there is no response the complainant may elect a single panelist. In both cases, a decision is given within twenty one days.

This decision is directly implemented by the CIRA.Since BCICAC was founded more than hundred cases have been solved by this institution.

 

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

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Conflict between trademark and plant variety

Written by Dreyfus07/08/2019

In the decision of June 18, 2019, the General Court of Justice of the European Union applied Article 7, paragraph 1, m) of Regulation No. 2017/1001, which prohibits the registration of trademarks that consist of “an earlier plant variety denomination registered in accordance with Union legislation” or “or reproduce in their essential elements, an earlier plant variety denomination”.

 

In this case, the German company Kordes filed an application for the European trademark “KORDES’ ROSE MONIQUE” in Class 31 for the following description of goods: “Roses and rose bushes as well as products facilitating the multiplication of roses”.  However, the European Union Intellectual Property Office (EUIPO) refused the registration of the trademark in question because it is composed of the term “MONIQUE”, corresponding the variety denomination “MONIQUE” registered in the Dutch register of plant variety protection.

 

 

To do so, the EUIPO must rely on the fact that the plant variety denomination “MONIQUE” is reproduced in the same way in the trademark applied for, and also the fact that this term is an essential element of the trademark.

 

Kordes appealed to the General Court of the European Union to reverse the EUIPO’s decision. In this respect, the company argued that the term “MONIQUE” cannot be considered as an “essential element”.  In addition, the company argued that the public would perceive the trademark as an indicator of roses of the “Monique” variety commercialized by the company Kordes.

 

The Court held that the distinctive and dominant element of the mark KORDES’ ROSE MONIQUE is the element “KORDES”, placed at the beginning, this word  is the essential element and the indicator of the source of origin. Accordingly, the Court considered that the variety denomination “Monique” cannot constitute an “essential element” of the trademark.

 

Consequently, the Court reversed the decision of the EUIPO refusing the registration of the trade mark KORDES’ ROSE MONIQUE.

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“Karawan” and “Caravan”: sign used as a reference, potential trademark infringement.

Written by Dreyfus05/08/2019

According to the judgment “Société Roche Bobois Groupe v. Société Caravane” of 23 January 2019, n° 17-18693, the French Cour de cassation held that a sign used to reference a piece of furniture may constitute a trademark infringement. In the present case, Roche Bobois had marketed sofas referenced as “Karawan”. Caravane, considering this exploitation damaging, sued Roche Bobois for infringement of its “Caravane” trademarks (both French and international).

 

Asserting that the use of a sign as a reference is common in the furniture sector, Roche Bobois claimed that the consumer was not likely to think that the sign “Karawan” was an indicator or origin of the products and is therefore not used as a trademark. Thus, Roche Bobois claimed that there was no infringement of the trademark “Caravane”. In its decision, the French Cour de Cassation ruled in favor of Caravane. The Court states that “the presence of the trademark “Roche Bobois” and the marketing of the products in a store dedicated to this trademark were not such as to remove the function of the disputed sign as an indicator of origin”.

 

The French Cour de Cassation  applied article L. 713-3 b) of the French Intellectual Property Code, which prohibits “The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration.”

 

As such, Roche Bobois was counterfeiting. Indeed, the Court held that the sign “Karawan” was not solely used as a sign to reference but as a trademark. Relying on different indicators, the Court found that the sign was used as trademark. Indeed, the sign “Karawan” was not only written in large letters and clearly displayed on advertising posters but the trademark “Roche Bobois” was not clearly visible to the customer (at the bottom of the advertising posters, in small characters, etc.). Furthermore, a Google search combining the terms “sofas” and “Karawan” led to products of Roche Bobois. The sign was therefore not used for referencing purposes but solely for distinguishing and individualizing products as being those of Roche Bobois. Then, there was a risk of confusion in the minds of the public between the trademark “Caravan” and the designation “Karawan”. As a consequence, the use of the sign “Karawan” by Roche Bobois infringed the “Caravan” trademark.

 

The use of a sign as a reference is common practice in the furniture sector, but the decision of the French Cour de Cassation requires companies resorting to this practice to be more careful in the choice and the use of a sign as a reference. It is essential to avoid any risk of confusion in the minds of the public. The trademark associated with the marketed product must therefore be clearly visible and distinct of the sign used to reference.

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Trademark reform package – Changes regarding the invalidity proceedings

Written by Dreyfus05/08/2019

Our study of the draft orders transposing the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015, leads us today to examine the invalidity action. The owner of an earlier mark who is instituting invalidity proceedings may now be opposed by the defendant non-use of the earlier mark. In addition, the invalidity action becomes imprescriptible.

Non-use is a defense in invalidity proceedings

As French law currently stands, a trademark cannot be registered if it consists of:

Only the graphical representation requirement is removed by the draft orders. The other conditions of validity of a mark are still grounds for invalidity proceedings. The owner of prior rights may request the invalidation a trademark infringing his rights, while the public prosecutor may request it pursuant to all the other conditions of validity (Article L. 714-3). The owner of a well-known trademark may also initiate invalidity proceedings against a trademark registered subsequently to his own (Article L. 714-4).

The French draft orders introduce the possibility to raise as a defense in invalidity proceedings the non-use of the prior trademark. In other words, the owner of a challenged mark may argue in defense that the earlier mark has not been used seriously for an uninterrupted period of five years. The plaintiff must provide proof of this serious use. Thereupon, there are two scenarios under the new Article L. 716-2-3.

  • If the earlier trademark has been registered for more than five years prior to the date of the institution of the invalidity proceedings, but less than five years before the filing of the later trademark: the owner of the mark thus challenged must provide proof of serious use during the five years preceding his application or provide adequate reasons for this non-use;
  • If the earlier trademark has been registered for more than five years at the time that the later trademark is filed: the owner of the mark thus challenged will have to provide proof of serious use for the five years preceding the filing of the prior trademark and during the five years preceding his application. Here again, only adequate reasons for its non-use will be able to excuse lack of serious use.

Invalidity proceedings become imprescriptible

Invalidity proceedings are currently subject to the ordinary law prescription provided by article 2224 of the French Civil Code, namely “five years from the day the holder of a right knew or should have known the facts enabling him to exercise his right”. Article L. 714-3 of the French Intellectual Property Code furthermore states that a trademark owner cannot institute invalidity proceedings if the contested trademark “was filed in good faith and if he had tolerated its use for five years”.

The French draft orders make invalidity proceedings imprescriptible in a new Article L. 716-2-6. Only well-known trademarks, within the meaning of Article 6bis of the Paris Convention, will remain subject to a statute of limitations of five years from the date of registration, unless the application has been made in bad faith (Article L. 716-2-7, new).

It can be argued that making invalidity proceedings imprescriptible weakens the rights of trademark owners because their rights can be challenged at any time..

The new measures put in place by the French draft orders transposing the “trademark reform package” must therefore encourage trademark owners to check with great care the validity of their sign before registering it as a trademark.

To be continued…

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Social networks and online reviews: how to defend against unfair competition

Written by Dreyfus05/08/2019

In a short time, networking sites have become one of the main channels for companies’ communication. eBay, Tripadvisors, Amazon or even the more conventional social networks such as Facebook or Twitter have, in fact, become preferential showcases for advertising. They do undoubtedly represent an opportunity for making a company visible, but they nonetheless pose a real threat to reputation. Companies are now faced with a new, major challenge in terms of unfair competition, that is to say “fake customer reviews”, that, although false, have a great influence on the consumption of the products and services they target.

The French Directorate-general for competition, consumer affairs and prevention of fraud (DGCCRF) revealed that 74% of surfers have already changed their minds about buying a product because of negative comments or reviews.

 

Faced with this hefty problem, companies endow themselves with legal instruments with the intention of stamping out such practices.

 

Disparagement and deceptive marketing practices

The case law has already determined in the past, that defamation cannot be a valid foundation for “judgements, even excessive, concerning the products or services of an industrial or commercial undertaking”.[1]

Concerning unfavourable reviews regarding a commercial activity, undertakings must base their case in the domain of unfair competition, particularly by referring to an act of disparagement. This practice consists in a person or an undertaking discrediting the goods or services of an undertaking with the intent to harm reputation. Like any act of unfair competition, the author of disparagement can be held liable on the basis of article 1140 of the Civil Code.

For instance, on this basis, the Court of Appeal of Paris ruled against a company selling food supplements which had strongly criticised the products of their rival on their site in the “product reviews” section, describing them as “crap” among other things.[2]

The Court had, in the case in point, also based its decision on article 121-1 of the Code of Consumption which sanctions deceitful marketing practices to the extent that such comments corrupt the natural behaviour of the consumers.

Similarly, sanctions had been pronounced concerning negative opinions of a restaurant which had not yet even opened when they were posted.[3]

New sanctions for false online reviews

Although disparagement and deceitful practices had been the traditional foundations concerning these exaggeratedly negative remarks, the legislator specifically intended to control and thereby punish these fake reviews.

 

In the light of this, three implementing decrees of the law for a Digital Republic entered into force on 1st January 2018. Introducing the new article L111-7-II of the Code of Consumption, they oblige undertakings and individuals whose activity consists in collecting, moderating or disseminating online reviews from customers, to provide fair, clear and transparent information on their processing and publication. This must be presented alongside said reviews, their date of publication as well as that of the consumer experience concerned and whether or not they underwent a control procedure. These decrees replace individual platforms’ voluntary compliance with the Afnor standard, which is supposed to ensure the fairness of the comments. It remains to be seen how the platforms will comply with such requirements.

This new obligation which imposes increased monitoring of such reviews on undertakings, shows that, although unfair competition was a convenient tool, case law has shown that these extensive large scale practices represented a real challenge for companies and should be framed by specific texts.

[1] https://www.legalis.net/jurisprudences/tribunal-de-grande-instance-de-paris-17eme-chambre-correctionnelle-jugement-du-13-fevrier-2014/

[2] https://www.legifrance.gouv.fr/affichJuriJudi.do?idTexte=JURITEXT000018909511

[3] http://www.lemonde.fr/societe/article/2015/10/27/2-500-euros-d-amende-pour-avoir-denigre-un-restaurant-sur-internet_4798047_3224.html

The firm Dreyfus & associés specialises in the field of intellectual property. Their team is up to date on the new developments in European legislation. They will be able to provide you with all the help and guidance you require concerning your intellectual property rights in Europe.

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