On May 20 2019, EUIPO and EURid, the European Registry for Internet Domains, announced in two separate press releases that they have launched a new monitoring service for domain names in .eu and .ею (See EUIPO press release and EURid press release).
According to these two press releases, this new service aims at fighting cybersquatting and bad faith domain name registrations. Since May 18, 2019, applicants and holders of European Union trademarks may opt in to receive an alert as soon as a .eu or .ею domain name, identical to their European Union trademark application, is registered.
It is specified that this new service is advantageous both in terms of speed and efficiency. It allows applicants and holders of European Union trademarks to be informed of the registration of these domain names more quickly than if they would have to monitor registrations themselves, and they are thus able to act more quickly if necessary. In addition, this service will also detect earlier the registrations of other domain names by third parties, in the event of multiple bad faith domain names registrations.
Finally, these two press releases specify the that EUIPO and EURid have collaborated since 2016 and that they signed a second letter of collaboration at the Annual Meeting of the International Trademark Association (INTA) in Boston, which was held from May 18 to May 22, 2019, thus strengthening the collaboration between these two entities.
Dreyfus is a specialist in domain names matters and can assist you in managing your domain name portfolio.
As a result, since May 6, 2019, the United Kingdom Office no longer collects and forwards to the International Bureau of WIPO (World Intellectual Property Organization) the fees due under these regulations.
In other words, any payment of these fees pursuant to a registration requested of the United Kingdom Office must be made directly to WIPO, as is already the case in France. As a result of this administrative change, a payment can now be made in four ways:
– By debiting a WIPO current account;
– By credit card, but only for payments of fees related to renewal of registered marks, notification of irregularities issued by the Office, or for additional fees relating to the designation of additional contracting parties after the trademark has been registered. Such payments are made in Swiss francs and require a WIPO reference number;
– By bank transfer;
– By postal transfer for inter-European payments.
To be handled correctly, payments by bank transfer must include the name and complete address of the payer, the transaction code (EN), the trademark number, the trademark name, if available, or its verbal elements, and the name of the trademark holder, if different from the payer. In the case of multiple requests, a list containing each request and the amount paid for each request is also required.
It is important to pay all fees in full, otherwise an irregularity notification will be issued. This notification shall specify a payment period beyond which the request shall be deemed to have been abandoned.
As the United Kingdom Registrar no longer makes these payments to WIPO, it is up to the applicant or his representative to be vigilant and diligent when making them.
One of the main innovations introduced by the “Trademark Package” Directive of 16 December 2015 (2015/2436 EU) is the introduction of an administrative procedure for revocation or declaration of invalidity. Some countries, such as Great Britain or Germany, have already introduced this new scheme into their legislation, but this was not the case in France. As the Directive did not specify how this new procedure must be implemented, the Government undertook this task with its draft project of the “Trademark reform Package”. The draft orders introduce several new articles in the French intellectual property Code (CPI) which aim at regulating how this administrative procedure can be implemented before the National Institute of Industrial Property (INPI).
Until now, pursuant to article R. 712-17 of the CPI, the INPI only addressed the issue of revocation for non-use if it was introduced by a trademark owner in an opposition proceeding. The French draft orders make the INPI competent to judge an application for revocation or invalidity of a trademark in a larger number of cases.
The INPI thus becomes primarily competent to deal with applications for invalidity and revocations of trademarks, even if there is no pending litigation. The courts remain competent to deal with counterclaims, asking the court to revoke or invalidate a trademark, and for applications for invalidity as a principal based on commercial names, domain names or author rights. More generally, courts remain exclusively competent to deal with other civil actions and trademark claims, including related issues of unfair competition. The same applies for invalidity or revocation applications’ presented in a case of an infringement request (as a principal or counterclaim), or when provisional or protective measures are being enforced (Articles L 411-4 and L. 716-5 new).
The administrative procedure before the INPI is provided by the articles L. 716-1 and R. 716-1 to R. 716-11 (new) and includes an adversarial investigation phase. The INPI must decide on the application of invalidity or revocation within three months of the end of this phase, otherwise the application is deemed to have been rejected.
The application for invalidity or revocation submitted to the INPI must include:
– the identity of the applicant;
– the indications allowing to establish the existence, nature, origin and scope of the prior rights invoked;
– the references of the trademark and the goods or services covered by the application for invalidity or revocation;
– the presentation of the means;
– the proof of payment of the fee (within one month);
– the authorization of a potential representative.
This request must be carefully prepared since once it has been made its basis and scope cannot be extended.
The instruction phase begins with the notification to the owner of the contested trademark of the action filed against him. This leads to adversarial exchanges through written observations. These written exchanges between the parties may be punctuated by oral observations. Once the instruction phase has been completed, the INPI decides on the application.
In this respect, all these INPI decisions ruling on an application for revocation or invalidity must be reasoned (Article L. 411-5, new) and may be the subject of an action for invalidity or reform before the French Court of appeals of the applicant’s place of residence (Articles L. 411-4-1 and R. 411-19, new).
With this new administrative procedure, it is no longer mandatory to go to court. However, the invalidity of a trademark is often part of a broader litigation, which may itself concern several titles. Not all the multiple issues thus raised will be within the competence of the INPI. Consequently, the judicial judge will recover exclusive jurisdiction to rule on the case (e.g. if there is a related issue of unfair competition). Although his jurisdiction will be mainly limited to counterclaims for revocation and invalidity, the judicial judge is therefore not entirely set apart from this new procedure. The courts will retain their jurisdiction over the more complex cases, and their role will thus be complementary to the role assigned to the INPI.
Though the INPI is given greater jurisdiction, it is unlikely that the new procedure will be less costly, simpler, and faster and that it will indeed declutter the INPI’s registry from many unused trademark, as it was expected.
The accession of Canada to the Madrid Protocol allows a harmonization of Canadian’s trademark law on an international level. With a single international application, Canadian applicants will now be able to file an application in more than 80 different countries. Applicants from a Member State of the Madrid Protocol will have the opportunity to designate Canada in their international applications for registration. This alignment on the international standard brings many changes to Canadian law, which has been duly amended (Bill C-31). Trademark owners will have to take this into account from June 17.
Thus, the classification of goods and services according to the Nice Classification becomes mandatory for all registration applications. The measure is applicable to new filings and unpublished pending applications. Trademarks already registered will be classified in this way when renewed.
In this respect, the term of protection of a trademark is reduced from 15 to 10 years for any trademark registered after the entry into force of these treaties in Canada. Any trademark with a renewal deadline of June 17, 2019 or later will have a renewal term of 10 years.
The Canadian Intellectual Property Office has also established a mechanism allowing a third party to bring to the attention of the Office information that affect the registrability of a trademark filing. This procedure determines whether a trademark is registrable. It is applicable only in three cases :
if there is a likelihood of confusion with a prior trademark
if there is a likelihood of confusion with a previously filed trademark
if goods and services in the application for registration are identical or similar to an prior trademark.
Evidence of past use and written arguments will not be taken into consideration and the Office reserves the right to eliminate this practice in the event of abuse.
Moreover, an opposition to a trademark application may now be partial and only concerns certain goods and services designated by the application for registration. If the opposition is successful, the applicant will be able to keep his trademark application for the goods and services not covered by the opposition.
Finally, the mandatory declarations of use is removed and the registration of specific trademarks (olfactory, gustatory, etc.) becomes possible if the trademark is distinctive in Canada on the filing date of the application. Furthermore, it is no longer required to indicate whether a trademark filed in Canada has already been used in Canada or abroad.
Trademark owners are therefore encouraged to audit their portfolios of protected trademarks in Canada to understand the possible consequences of the new law. Moreover, Canada’s entry into the system of the international trademark is a tremendous opportunity to protect new brands in Canada: to be used without moderation! Dreyfus assists its clients worldwide in their brand protection and defense strategies. Do not hesitate to contact us.
According to this report, the number of top-level domain names registrations (TLDs) reached approximately 348.7 million at the end of the 4th quarter of 2018, an increase of nearly 16.3 million or 4.9% in the number of domain name registrations compared to the previous year.
It is interesting to note that the number of domain name registrations in .com and .net was 153 million at the end of the fourth quarter of 2018, an increase of nearly 6.6 million or 4.5% in one year.
In addition, the number of country code top-level domain names (ccTLDs) registrations at the end of the last quarter of 2018 reached 154.3 million, an increase of nearly 8.2 million or 5.6% in one year.
Finally, domain names registered in new extensions (ngTLDs) at the end of the last quarter of 2018 were 23.8 million, an increase of approximately 3.2 million or 15.5% in one year.
It is important to establish a clear strategy for domain name registration. Dreyfus can assist you in the management of your domain name portfolio.
This decree modifies the rules of protection of confidentiality for seized documents. From now on a provisional sequestration will include protection of documents that may contain information related to trade secrets.
Prior to the entry into force of the French act on the protection of trade secrets judges actively used the sequestration to protect confidentiality of seized documents. This decree legalizes the jurisprudential practice by introducing the provisional sequestration of seized documents.
The decree amends articles R. 521-2, R. 615-2, R. 623-51, R. 716-2 and R. 722-2 of the Intellectual Property Code in the same way in order to give the same powers to the judges who authorize infringement seizures.
However, it is only a temporary sequestration of seized documents. For a period of one month, the party or third party claiming that documents contain trade secrets may ask the judge to amend or withdraw his order.
According to Article R. 153-3 of the French Commercial Code, it is the responsibility of the party or third party claiming trade secrets to ask the judge to withdraw his order before a deadline set by the judge. It is up to the party to provide the following:
– The full confidential version of the document
– A non-confidential version or a summary of the document
– A statement specifying the reason why the document or a portion of the document is considered a trade secret
The judge may also hear separately the holder of the document, assisted or represented by an authorized person, and the party that appeals the order.
In case the party claiming that the document contains trade secrets has not sent an application to withdraw or amend the order within one month, the judge may rule on the total or partial lifting of the sequestration. If it is lifted, the documents can then be sent to the applicant.[/vc_column_text][/vc_column][/vc_row]
In this case, Fourth Estate Public Benefit Corporation, an online news producer, had granted copyright licenses on some of its content to Wall-Street.com, a news website. The license agreement required that the licensee delete any item produced by Fourth Estate after the license had expired, which Wall-Street.com refused to do. Therefore, Fourth Estate filed a copyright infringement suit against Wall-Street.com., which in response requested dismissal of the action, claiming that Fourth Estate could not take legal action before the Copyright Office had followed up on its application for registration. The district court granted this motion and the Court of appeals for the Eleventh Circuit affirmed. Fourth Estate asked the United States Supreme Court to review the case, and its petition for certiorari was granted.
The debate focused on the interpretation of section 411 (a) of the Copyright Act (1976). This article states that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title”.
The question was whether, in order to bring an infringement action, it was sufficient to have filed an application for registration, payed the fee, and provided copies of the work, or if the Copyright Office had to have already granted the application for registration. The Supreme Court held that the fact that registration “has been made” means that the Copyright Office has registered the copyright or has definitively refused to register it, after having examined the duly filed application. This judgment therefore highlights the importance of the registration procedure before the Copyright Office.
In this respect, we recommend applying for copyright registration as soon as possible. Indeed, an earlier registration offers important advantages for right’s owners. Indeed, if the registration is made within five years of the publication of the work, it has probative value. If the registration is made within three monthsof the publication of the work, a right’s holder may be granted statutory damages and attorney’s fees, not merely damages. In addition, once registration has been completed, the copyright owner may object to the importation of counterfeit works into the United States.
Therefore, the right to file an infringement suit to protect rights is only one of the advantages granted by the Copyright Act to copyrights holders. Following the Supreme Court’s decision, copyright owners must now pay close attention to the Copyright Office’s examination delays. It takes approximately seven months to examine an application. Exceptionally, an accelerated procedure, called “special handling”, allows the Office to rule within five working days. However, this accelerated procedure carries higher fees. Therefore, it is in the holder’s interest to anticipate having to defend his rights. The earlier the application for registration is filed, the more likely the applicant will be able to defend his rights by filing a copyright infringement suit.
Under section 411 of the Copyright Act, if registration is refused, the applicant may nevertheless file an infringement action if a notice to that effect is sent to the Copyright Office, along with a copy of the complaint. The Office can choose within sixty days to become a party to the action with respect to the issue of registrability of the copyright claim. . A right’s holder can thus take legal action even if the absence of registration makes his situation more precarious.
In conclusion, we note that it is in the best interests of rights holders in the U.S. to register their copyrights. Furthermore, despite the United States’ accession to the 1886 Berne Conventionin 1989, this text is not directly applicable in U.S. law, under the Berne Convention Implementation Act of 1988. As a result, rights holders from a country party to the BerneConvention, such as France, have to register their rights with the Copyright Office in order to be able to invoke all the rights conferred by American copyright law. This registration is particularly recommended if the owner wishes to exploit his work through licensing agreements (e.g. software), or if the work is to be distributed online (e.g. music).[/vc_column_text][/vc_column][/vc_row]
In its information notice No. 21/2018, the World Intellectual Property Organization (WIPO) details the various changes that have been made to this text. These concern:
The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new point 7.7)
The merger of international registrations (new Rule 27ter),
The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b)),
The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations,
The publication in the WIPO Gazette of international marks (Rule 32).
The new features and the main rules concerning these procedures are detailed below:
The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)
The new Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol specifies in its paragraph (1)(a) that “A request by the holder for the division of an international registration for some only of the goods and services in respect of a designated Contracting Party shall be presented to the International Bureau on the relevant official form by the Office of that designated Contracting Party, once the latter is satisfied that the division whose recording is requested meets the requirements of its applicable law, including the requirements concerning fees.”
Thus, the owner of an international registration may request the division of an international registration for some of the designated goods and services with regard to only one designated contracting party.
Various formalities must be respected in order to make such a division. For example, the request should be made through the intermediary of the intellectual property office concerned by the division request. Moreover, in the information notice No.21/2018, it is specified that “The Office concerned may examine the request for division of an international registration to ensure that it meets the requirements in the applicable national or regional law, as the case may be, before presenting it to the International Bureau of WIPO. The Office may also require the payment of a fee, directly to this Office, different from the fee due to the International Bureau of WIPO.”
It is the responsibility of the International Bureau of WIPO to examine the request in order to determine whether it meets the requirements of Rule 27bis and to notify the Office that submitted the request so that any irregularity can be corrected, while at the same time informing the holder. The concerned office has a period of three months from the date of the notification to correct any such irregularity. Otherwise, the request will be considered abandoned.
Finally, the information notice No.21/2018 specifies that, if the conditions are met, the International Bureau of WIPO shall record the division of the international registration with regard to a designated contracting party and then create “ a divisional international registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party, notify the Office that presented the request and inform the holder”.
The merger of international registrations (new Rule 27ter)
The information notice specifies that “all provisions dealing with the merger of international registrations will be consolidated in new Rule 27ter of the Common Regulations” following the deletion of Rule 27(3) from the same text.
These provisions relate to the merger of international registrations resulting from the recording of a partial change of ownership, the merger of international registrations resulting from the recording of the division of an international registration and the recording and notification of such mergers.
A request for the merging of international registrations resulting from the recording of a partial change of ownership must be submitted to the International Bureau of WIPO by the holder directly or through the Office of the Contracting Party of the said holder.
The information notice No.21/2018 specifies to that matter that “A divisional international registration may be merged only with the international registration from which it was divided”. A request for the merging of international registrations resulting from the recording of the division of an international registration may be submitted only by the holder through the Office that filed the division request.
The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))
WIPO says in its information notice No.21/2018 that: “the International Bureau of WIPO will be required to cancel, in whole or in part, as the case may be, an international registration resulting from the recording of division when the international registration from which it was divided is either totally or partially cancelled, at the request of the Office of origin, due to the ceasing of effect of the basic mark”.
The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations
The information notice No. 21/2018 of the WIPO specifies that “a Contracting Party, the law of which does not provide for the division of applications for the registration of a mark or of registrations of a mark, may notify the Director General of WIPO, before new Rule 27bis enters into force or before that Contracting Party becomes bound by the Madrid Protocol, that it will not present to the International Bureau of WIPO requests for division of international registrations”.
The same applies to requests for the merger of international registrations resulting from a division.
Contracting Parties, having made such notifications to the Director General of WIPO, may subsequently change their position at any time and accept such requests.
Finally, this same information notice specifies that “any Contracting Party may, before new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations enter into force or before the Contracting Party becomes bound by the Madrid Protocol, notify the Director General of WIPO that either one or both of the new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be”. Contracting Parties which have sent such a notification shall again have the possibility to withdraw it.
The publication in the WIPO Gazette of international marks (Rule 32)
Finally, the amendments and points detailed in the previous paragraphs also have an impact on Rule 32, of the Common Regulations under the Madrid Agreement and Protocol, regarding the publication of marks in the WIPO Gazette of International Marks. Paragraph (1)(a) of this Rule now provides that “The International Bureau shall publish in the Gazette relevant data concerning […] (viiibis) division recorded under Rule 27bis(4) and merger recorded under Rule 27ter”. Moreover, paragraph 2 provides that “The International Bureau shall publish in the Gazette (i) any notification made under Rules […], 27bis(6), 27ter(2)(b) or 40(6) […]”.
The international brand system is becoming more and more technical. Dreyfus can assist you in your brand protection strategies in all countries of the world.
Continuing the review of the changes in the opposition procedure made by the French draft orders transposing the “Trademark reform package”, we will now focus on the conduct of the procedure.
The conduct of the amended opposition procedure
An opposition procedure has been provided for a long time by Article L 712-5, but it is rather concise, as it merely states that the procedure must be contradictory. The procedure itself is detailed in Article R 712-16. It specifies that the opposition must be notified without delay and gives the applicant two months at least to submit his observations and to possibly choose a representative. The parties may then submit their observations during a period of at least two months, subject to any closures or suspensions. The National Institute of Industrial Property (INPI) then publishes its decision. Though the article R 712-16 indeed indicates that the draft decision is notified to the parties so that they may challenge it if they wish to do so, no indication is provided as to the duration of this period or even how many comments may be submitted. Emphasis is placed on respecting the right to be heard, as shown by the obligation for the parties to notify any comments f to the other.
In order to comply with the “Trademark Package” directive, the French government has drafted a new article L. 712-5 and a new article R. 712-16-1, which both detail the stages of the opposition procedure.
Firstly, an investigation phase allows the opponent and the applicant of the contested trademark to debate. The opposition is notified to the applicant, who then has two months following the publication of the registration to submit written observations. He must also provide his identity and the information required to establish the existence, nature, origin and scope of his rights, the references to the application for registration, the disputed goods and/or services, the fee payment receipt, and the power of attorney of his representative, if applicable. The changes thus made are about the delay granted for providing these various documents, which can be extended by one month, except for the communication of the fee payment receipt. Previously, the deadline was two months for all of these documents, except for the power of attorney, which had to be provided within one month.
Furthermore, the applicant may ask the opponent to produce documents establishing that his trademark has been genuinely used, if it has been registered for more than five years. In such a case, the opponent has one month to submit his comments and to contest any documents he may have received. A third and final adversarial exchange of one month may then take place, without the possibility, however, of raising new claims.
Oral observations may be presented during this time, in accordance with the procedures laid down by the Director General of the INPI.
Finally, a decision on the opposition is taken within three months. Failing this, this, the opposition is deemed to have been rejected (this period may be suspended, as provided for in the new Article R. 712-17.
As a result, the opposition procedure is now circumscribed in clearly defined delays. The number of exchanges between the parties, as well as the time allowed to provide documents for the file, or observations, is limited in a concern of speed and efficiency.
The opposition procedure would thus evolve both as regards its conduct, which is now specified and clarified, and in regards to the rights which may be invoked, and their holders. The changes would allow French law to take into account development in practice by giving priority to the protection of holders of previous rights.
Thus, the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 requires, above all, a rapid and efficient procedure, but does not detail which steps must be taken to this effect. However, article 5 of the Directive details the rights, which may be invoked. In its draft orders, the French government plans to extend the prior rights that may be invoked and to modify the opposition procedure, which will lead to a modification of the French Intellectual Property Code.
“(…) 1° the owner of a mark that has been registered or applied for at an earlier date or which enjoys an earlier priority date or by the owner of an earlier well-known mark ;
1° bis The Director of the National Institute of Origin and Quality, where there is a risk of damage to the name, image, reputation or notoriety of a designation of origin or geographical indication (…);
2° The beneficiary of an exclusive right of exploitation, unless otherwise stipulated in the contract ;
3° A territorial community under h of Article L. 711-4 or under an infringement of a geographical indication defined in Article L. 721-2, therefore that this indication includes the name of the community concerned ;
4° A defense and management organization mentioned in Article L. 721-4 which geographical indication has been approved in application of Article L. 721-3 or whose application for approval is being examined by the Institute (…)”
The previous rights that may be protected by a territorial community under paragraph 3 are its name, image and reputation as well as geographical indications, as defined by Article L 721-2 of the French Intellectual Property Code, which contain the name of the territorial community. The geographical indications defense and management organization referred to in paragraph 4 is a private legal entity.
In its draft orders, the French government has chosen to treat separately the rights that may be invoked and the rights holders who may file an opposition: the new Article L. 712-4 of the French Intellectual Property Code focuses on the former, while the new Article L. 712-4-1 deals with the latter. This change of form is accompanied by a change of substance. The rights that may be invoked are extended, which has repercussions on the holders who can act. In this regard, it follows that:
– The existence of an earlier famous trademark, that is to say a trademark which is known worldwide, may be invoked in an opposition procedure;
– Any legal person may invoke the existence of a legalname or a company name if there is a risk of confusion in the public’s mind;
– Any public legal person may report an infringement of the name, image or reputation of a public institution or authority, or of a body governed by public law.
Furthermore, changes have been made regarding the rights that can already be invoked. Approved or registered geographical indications can be invoked, but the law no longer refers to infringement of their name, image or reputation. This change is welcome since a geographical indication is a name used to designate a specific product, and thus it can hardly claim to have a name, an image and even less a reputation. Indeed, only the entity or the territory to which this name is attached can claim it. This expression is therefore reserved for infringement to the rights of a territorial community, institution, authority or a public organization.
In this respect, the draft orders also allow any person exercising his rights over an approved or a registered geographical indication to file an opposition. As the text is not specific, it may be a physical person or a legal entity, such as territorial communities, if their name is being used.
However, designations of origin are no longer mentioned in the new wording of the Article L. 712-4. Today, this term refers to several sub-categories. It is therefore likely that it will be included in geographical indications, as the aim in both cases is to guarantee quality and to recognize a place of production or know-how specific to a particular region.
Moreover, opposition to an application for registration may now be filed by the owner of a trademark, which was registered without his authorization, in the name of his agent or representative. This add-on thus takes this particular practice into account to protect the interests of the trademark holder. Until now, Article R712-13 provided the possibility for a holder to act through a representative, but did not consider that the latter could act without authorization. Besides, the French Intellectual Property Code did not provide any guidelines in such a case.
Finally, it should be noted that, from now on, several of these rights can be invoked at the same time in a sole opposition procedure. It will be necessary, however, that they belong to a single holder, or that the various holders have appointed a common representative (new Article R. 712-13), and that the goods and/or services of the trademarks are at least partly identical to those of the contested trademark.
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On May 20 2019, EUIPO and EURid, the European Registry for Internet Domains, announced in two separate press releases that they have launched a new monitoring service for domain names in .eu and .ею (See EUIPO press release and EURid press release).
The U.S. Supreme Court held on March 4, 2019 on a long-debated question. 
On February 1, 2019, a new version of the 
