Intellectual Property Code Article L.711-4 prohibits adoption of a sign that infringes on prior rights, especially business and trade names that are well known within the country if there is a likelihood of confusion in the mind of the public. By judgement dated July 8, 2016, Marseille’s Tribunal de Grande Instance extended the prohibition to trademarks and domain names that infringe, not only on such names but on their acronyms (TGI Marseille, 1e ch. Civ., 8 juillet 2016, n° 14/06485, Association ACFA c/ Société ACFA Multimédia inédit). This extension is justified by the presence of the French adverb translating roughly to “mainly” or “namely” in said article, emphasizing the non-exhaustive nature of the list that follows. Indeed, emphasis must be placed on the existence of a likelihood of confusion on the part of the public, a notion that merits examination on a case by case basis and per the facts of each case.
In this particular case, we have on the one hand the Association de Création et de Formation Audiovisuelle (ACFA): registered with the Rhône Prefecture since 1991, it is registrant of the domain name “acfa-cinema.com” used since 2009 and called by its acronym, ACFA, by everybody in contact with it. On the other hand we have SAS ACFA Multimedia: it is a school that offers training in trades of sound and image, registered with the Montpellier Trade and Companies Register in 2000, owner of the French trademarks “ACFA” and “ACFA CINE” registered in 2011 and 2012 and registrant of the domain names “acfacine.com” and “acfa-cine.com”. Following failure of the lawsuit filed by the latter in which the company tried to oppose its’ trademarks to the association for procedural reasons, the association sued the company and requested cancellation of their trademarks due to invalidity. They also requested transfer of the two domain names over to them. The court upheld the claim on the basis of Article L711-4 of the Intellectual Property Code and granted the award of damages. The judges revealed the likelihood of confusion between both entities which both provide training in the same field, and, unlike the association, the company had no explanation as to the origin of the acronym “ACFA”. Hence the association’s acronym has gained the value of a known commercial mark through use, and constitutes a protected prior right.
Dreyfus & associés is specialized in the field of trademarks law. Its team can provide you with th help and advice you need to file for your trademarks applications.
Like every “wash-up period” preceding the dissolution of the British Parliament and the election of a new one, this latest period witnessed the passing of a new intellectual property Act, which received Royal Assent on April 27, 2017.
As its name implies, the Act is specific to liens issued by intellectual property rights owners. It is a chapter for each right, namely patents, trademarks, and designs. It harmonises the status of the rights of holders, leaving copyright aside.
First, the Act defines a threat of legal action for infringement. Accordingly, there is no doubt that the existence of an intellectual property right exists (patent, trademark or design) exists and that the holder of these rights has the right to bring legal action.
The Act focuses on the right of entry into the market for the first time, or for the first time. The rights’ owners will also be able to provide these actors with Furthermore, the Act describes the actor’s defence of the threat, namely, that the threat is unjustified, seeking an injunction against the threat, or seeking damages for the harm suffered. This defence does not have the right to proof of ownership.
Finally, the Act introduces a new provision of advice to those who know their clients in the communication. This new “Intellectual Property (Unjustified Threats) Act” is perceived as a positive step toward harmonizing the British legal system with views to intellectual property. The owner must remain vigilant before bringing a threat against a potential infringer to the consequences of the qualification of an unjustified threat.
Dreyfus & Associates is specialized in the field of intellectual property. The Dreyfus team is following new developments in Europe. We can help and advise you about intellectual property rights within Europe.
Like every “wash-up period” preceeding the dissolution of the British Parliament and the election of a new one, this latest period witnessed the rushed adoption of a new intellectual property Act, which received Royal Assent on April 27, 2017.
As its name implies, the Act is specific to threats issued by intellectual property rights owners. It devotes a chapter for each right, namely patents, trademarks, and designs. It therefore harmonizes the status of the threats communicated by rghts holders, leaving copyright aside.
First, the Act defines a threat of legal action for infringement. Accordingly, communications contain such a threat if a reasonable person in the position of a recipient understands that an intellectual property right (patent, trademark or design) exists, and that the holder of these rights intends to bring legal action.
The Act focuses on the possibility for intellectual property rights holders to address their threat of legal action for infringement to the primary actors (i.e. manufacturers or importers) directly, without risk of liability for unjustified threats. The rights’ owners will also be able to require these actors to cease secondary acts such as product sale.
Furthermore, the Act describes the actor’s defence once he has been threatened, namely declaring that the threat is unjustified, seeking an injunction to cease the threat, or requesting damages for the harm suffered. This defense does not hold if the owner demonstrates his right along with the measures taken and communicated to the perpetratof of the infringement.
Finally, the Act introduces a new provision preventing the owner from addressing threats to professional advisers who act upon instructions and who identify their clients in the communication.
This new “Intellectual Property (Unjustified Threats) Act” is perceived as a positive step towards harmonizing the British legal system with regards to intellectual property. The owner must nevertheless remain vigilant before bringing a threat against a potential infringer so as not to suffer the consequences of qualification of an unjustified threat.
Dreyfus & associés is specialized in the field of intellectual property. The Dreyfus team closely follows new legal developments in Europe. We can help and advise you regarding all intellectual property rights within Europe.
Darkweb… This is a term that gives rise to distrust. In order to understand this notion and the issues that arise from the existence of domain names, it is necessary to define the Internet in a concise way.
What is Darkweb?
In order to best understand how this fabric of computer networks works, most authors present the World Wide Web System in the form of an iceberg with the emerging part corresponding to the Surface web and the immersed part corresponding to the Deep Web. At the very base of the iceberg is the Darkweb. The difference between Deepweb and Surface Web is in the intervention of an indexing robot (crawler). In other words, if we cannot find bank details on the web, it is because these pages are not indexed.
However, some sites are specifically created to escape from any referencing: they are integrated into the deep web but are what is called the Darkweb. This word allows to set the tone: The Darkweb brings together all the anonymous darknets networks, and is only accessible on the Deepweb. By their nature they are most often used for illegal purposes.
The Domain name architecture
An Internet address consists of a “www” (World Wide Web) prefix and a domain name. This domain name is itself composed of a string of characters and an extension (gTLDs, corresponding to the generic top-level domains, ccTLD corresponding to the national top-level domains, new gTLDs corresponding to the new Generic top-level extensions launched by ICANN a few years ago). The domain name is registered via a registrar or a registry that issues the assignment if it is available. Registrars are in contract with ICANN, which oversees the rules for naming and managing domain names.
Darkweb and domain names: what relationship?
To be able to penetrate the Darkweb, it is necessary to use anonymizing software, the most known being Tor. On the Darkweb, there are no traditional URLs, based on “www”, understandable domain names, and Tld in “.com”, “.fr”, etc. On the Darkweb, the addresses of the Internet sites are composed of mixed numbers and letters, and of unknown Tld. For example, the Tld of Tor is the “.onion”… thus far from the extensions controlled by ICANN. This is called open roots.
In order to understand, one must bear in mind that there is governance set up by ICANN. The latter manages the roots of the Internet and administers digital resources, such as IP addresses and domain names. Willingness to emancipate, lower cost, fight against the shortage of domain names, all these factors are considered in the evolution of open roots and their democratization. It is on this principle that the Darkweb is based.
Around these particular Tld there are disputes. Indeed, if the existence of this type of roots does not taint the root of ICANN, this coexistence can sometimes be difficult as evidenced by two disputes against ICANN by the companies Name.Space and Image Online Design which market extensions based on open roots.
These two disputes arose when ICANN launched the new Tld program, more commonly referred to as “new gTLDs”. In this case, Name.Space and Image Online Design had been proposing domain names since the mid-90s, particularly in the “.web” Tld. In the year 2000, these two companies applied for these extensions to ICANN, without success. However, later, ICANN did not object to a request for a new “.web” extension in its new Tld program, knowing full well that these Tld were marketed by the aforementioned companies. These two companies have therefore brought a lawsuit in the United States against ICANN for trademark infringement, illicit agreement, unfair Competition and criminal acts.
The use of this type of so-called open roots deserves full attention and presents itself as an alternative solution to the system set up by ICANN. However, the difficulties that they can create should not be neglected.
What are the possible developments?
In 2015, the Internet Engineering Task Force (IETF) designated the “.onion” Tld as a special-purpose, first-level domain name used to implement an anonymous service with strong privacy characteristics. A first-level reserved domain is a top-level domain that is not intended for use in the Internet domain name (DNS) system, but is reserved for other purposes. Therefore, ICANN does not administer these special-purpose first-level Tld.
The Tor project worked with Facebook to achieve this recognition, as well as the Tlds in “.example”, “.invalid”, “.localhost” or “.test”. It is also an important step. However, and as with other special domain names, the “.onion” will not be able to become a top-level domain name sold by ICANN.
Thanks to the decisions made by the organizations for Internet regulation, “.onion” sites are now considered to be existing. In addition, they will be able to offer better security to their users more easily. Thus, SSL/TLS certificates can be issued by an authority for “.onion” sites in order to put a security protocol in place so as to ensure the legitimate identity of a site, but also to allow the encryption of their contents.
There is thus a willingness of emancipation from the negative shackles represented by the Darkweb in the eyes of the Cybernaut community, demystifying the notion.
The Darkweb also allows, thanks to the progress of the Tor project and the IETF, to secure a website that one does not wish to reference. It also means that we do not necessarily only find illegal sites on these anonymous networks, but that Darkweb is used as a means of confidentiality.
On September 29th, 2017, three new decrees in France were taken under The Law for a Digital Republic after a broad consultation within the conseil national de la consommation (National Consumer Council, CNC) with the representatives of the concerned companies. They clarify the practical modalities of new obligations of transparency and loyalty for online platform operators. In other words, consumers will have access to clearer, objective and transparent information.
The three decrees concerned are as follows:
Decree No. 2017-1434 of 29 September 2017 (which will entry into force on January 1st, 2018) concerning the information provisions of digital platform operators
Decree No. 2017-1436 of 29 September 2017 (which will entry into force on January 1st, 2018) concerning the information provisions for consumer online notices
Decree No. 2017-1435 of 29 September 2017 (which will entry into force on January 1st, 2018) concerning the establishment of a threshold of connections from which online platform operators develop and disseminate good practices in order to strengthen clarity and transparency of information transmitted to consumers.
What is an online platform? Who is affected by these obligations?
Article L111-7of the French Consumer Code provides that “an online platform operator shall be any natural or legal person proposing, on a professional or remunerated basis, a communication service to the on-line public based on:
1° Classification or referencing, by means of computer algorithms, of content, goods or services proposed or put on line by third parties;
2° or the linking of several parties regarding the sale of a property, the provision of a service or the exchange or sharing of content, property or service. »
These provisions therefore aim for marketplaces such as Amazon or eBay, sites of price comparators, goods or services, search engines, social networks or platforms that connect professionals and consumers or l consumers between them.
What exactly is this?
Platforms that value content, goods or services offered by third parties, in the image of search engines, social networks or comparator sites, must specify the criteria for referencing and ranking that they use. The concerned information are the conditions for referencing and dereferencing content and offers, the criteria for the default classification of content and offers, or the existence of a capital link or remuneration between the said platform and the companies referenced. This for example allows one to fully know the influence exerted on classification or referencing.
Sites which publish consumer advisories such as TripAdvisor, for example, will need to clarify whether these published notices have been verified and by which method. The online notice is defined as the expression of a consumer’s opinion on his or her consumption experience. The sites concerned will therefore have to detail or not the existence of a procedure of control, the date of publication of each notice and the classification criteria of the latter. In an easily accessible section, they should specify whether or not there is a financial consideration provided in exchange for the filing of notices and the maximum period for publication and retention of a notice.
Finally marketplaces will have to provide consumers with essential information that can have an impact on the choices: the quality of the seller, in particular the professional or consumer status, the description of the service of connection and the price of this service where appropriate, the existence of a right of withdrawal, a legal guarantee of conformity or the method of settling disputes, which are often numerous on such sites and which sometimes discourage consumers by their lack of visibility.
By the end of 2018, the most visited platforms (number of monthly connections greater than 5 million of unique visitors) will be required to follow good practices in terms of loyalty, transparency and clarity. These good practices will be available online by the visitors. These provisions shall apply as from January 1st, 2019. For companies above the threshold, they will have six months to comply.
The topics must be well identified, directly and easily accessible from all the pages of the website. In the case of collaborative platforms, they must be accessible without the user needing to identify themselves.
Finally, these decrees show a willingness to protect the consumer, particularly in cases where platforms, usually seen as neutral, are sometimes paid by companies (for referencing, classification, opinions, etc.). It is a step towards transparency for global players in trade and consumption.
In this regard, Bruno Lemaire said that “platforms play a major role in the digital economy, and are a point of access to many online services for all French people.” These decrees will enable consumers to access clear, objective and transparent information, in order to build confidence in the information presented on these platforms. The objective is to better balance the relationships between platforms and users.
Dreyfus assist you in your compliance procedures thanks to its team of specialized jurists.
After several months of work begun in March 2016, the “connected vehicles and personal data” pack released last October by the CNIL constitutes a real “toolbox” for professionals in the automotive sector.
The compliance pack issue
Thanks to this system of reference, professionals in the automotive sector will be able to integrate personal data protection for their users, and at the same time, comply with the General Data Protection Regulation (GDPR), which will be applicable from May 25th, 2018.
Developed by the CNIL in consultation with both public and private actors of the sector, this pack applies to vehicles equipped with a communication system which communicates with the exterior. If this communication system provides users with a multitude of new services, their implementation imposes a considerable collection of data on the driver and its interaction with the road environment.
By this toolkit, the CNIL seeks to sensitize professionals of the sector on the personal character of certain collected data, for which special protection is required under the Computer and Freedom Law of January 6th, 1978 and RGPD.
Personal data collection
This pack intervenes with a protection objective, since these personal data collections, defined as any information identifying a natural person, are likely to impair the privacy of these connected vehicles’ users. Indeed, there are many risks associated with vehicle connectivity. For example, the geolocation data collected reveals the users’ habits, and could induce malicious people to enter their homes in their absences.
Towards a responsible use of data
In order to take greater responsibility with data use, the CNIL differentiated three options in its pack for which guidelines are offered to professionals although the first is strongly encouraged by the Commission:
The data collected in the vehicle shall remain in it without transmission to the service provider;
The data collected in the vehicle is transmitted to the exterior to provide a service to the person concerned;
The data is transmitted to the exterior to trigger an automatic action in the vehicle.
By encouraging manufacturers to integrate the protection of personal data of connected vehicles’ users that produce an average of 1 billion bytes of data per day, this guide ensures transparency and control of data by the user.
The future adaptation of the CNIL pack to autonomous vehicles
If this text anticipates the future of the automotive sector, it is intended to be modified in the future in order to adapt to autonomous cars that will produce 30 000 times more bytes of data per day according to Le Monde (a French newspaper). This is because, in the long run, autonomous vehicles will need to capture, analyze, understand its environment constantly, thus becoming truly dependent on the data collected.
If the pack is applicable today expressly to connected vehicles, two of its obligations significantly impact the development of autonomous vehicles: data protection from the conception of the product governs by the principle of Privacy by Design and default data protection, framed by the principle of Security by default.
The design of “Ethics by Design” vehicles in response to the objective of protecting users ‘ privacy
Indeed, serious consequences on the privacy of users can result from the use of these connected vehicles. Thus, in order to avoid breaches of the principle of protection of privacy and to gain the confidence of users in the use of these new technologies, ethical questions arise and new commitments are necessary. Among these commitments, car manufacturers and suppliers of artificial intelligence platforms could be bound by the obligation to design vehicles considered “Ethics by Design”.
Having a vocation to evolve according to the application of the GDPR, and according to the progress of the technology, we recommend you to initiate compliance as soon as possible. Endowed with a department dedicated to the issues of personal data and a department with technical skills, Dreyfus and Associates is the ideal partner to assist you in this process of securing the collected data.
Innovation represents a significant part of the budget of businesses both by its cost and by the time it requires. Fortunately, intellectual property makes it possible to counterbalance these effects by ensuring appropriate recovery and protection. The relationship between intellectual property law and competition law is an area of strong interest to the competition Authority. In the pharmaceutical field, generics are the main focus of anticompetitive practices performed by laboratories. These companies specialized in the production and marketing of generic drugs, made possible once the patent on the molecule is expired, are usually targeted as they can reverse the trend in a market monopoly.
Anti-competitive risks are found throughout the development of the generic drug: practices seeking to transgress the obtainment of a marketing authorization, excessive price, parallel imports, and restriction of penetration of the market by the practice of predatory prices, pay for delay, denigration, etc. Some anti-competitive strategies are constantly evolving and are the subject of recent decisions of the French Cour de cassation.
Denigration
Confirming previous decisions made by the French competition Authority, the French Supreme Court rendered two decisions concerning the denigration practice which consists of publicly discrediting using false or erroneous information.
The first decision of the Cour de cassation, commercial chamber, of October 18, 2016 (15-10.384) concerned the company Sanofi-Aventis which, marketing its own clopidogrel generic (Clopidogrel Wintop), denigrated the competing generic (PLAVIX). Seized by the generic drug producer Teva, the competition Authority estimated in May 2013 that Sanofi implemented “a comprehensive and structured communication strategy aimed at influencing physicians and pharmacists to stop the generic substitution mechanism” of Plavix. The French Cour de cassation then considered that Sanofi’s “dominant position” and its homemade generic had the effect of “limiting the entry of its competitors into the French market”.
In a second decision of January 1, 2017 No. 15-17.134 concerning the Schering-Plough company and Subutex, the French Supreme Court confirms a decision of the competition Authority of December 18, 2013 and the decision of the Appeal Court of Paris of March 25, 2015, n° 2014/03330 on practices aiming to delay the entry of generic drugs into the market.
It was the distributor’s duty to warn all health care professionals about generic products and to then grant fidelity rebates on the manufacturer’s products, so as to create inventories of several months of products. The competition Authority sanctioned the distributor and the pharmaceutical laboratory on the basis of article L420 of the French Commercial Code and article 101 TEEC. The Appeal Court then confirmed this decision by adding that “the development of a strategy aiming to delay the arrival of generic drugs on the market, which, after the end of their patents, can restore competition hitherto non-existent, constitutes a practice of a particular economic harmfulness”.
The laboratory, which challenged the decision of the Appeal Court before the French Cour de cassation, was reproaching to the judges of not being interested in the economic and legal context of the agreement, claiming that mere participation in the planning of denigration operations cannot be considered as harmful.
But the French Cour de cassation confirms the position of the Appeal Court which characterized anti-competitive practices: of “the content of the agreement, the objectives it intended to achieve and the elements of the economic and legal context in which it was inserting itself” so that it “may have noted that the agreement between the companies Reckitt and Schering-Plough had an anti-competitive object, no matter if the company Reckitt did not proceed to the practice of denigration […]”.
In addition to confirming the definition of denigration, the French Supreme Court offers two interesting criteria of analysis, namely: the nature of the information provided, by the method of the indices beam (is this objective or verified?) and the expected effect of this type of information on the relevant market (namely: discouraging health professionals from prescribing generic denigration).
Denigration therefore seems to become a danger zone for companies practicing it.
Abusing the exploitation of patents
Some patent strategies are abusive. They go like this:
The cluster patent, which consists of filing “barrage patents”, often unfounded, in order to give a feeling of doubt about the possibility of entering the market.
The ambush patent, which consists of a company participating in the elaboration of a technological standard while not revealing the patent incorporating it, in order to maintain its monopoly situation and to charge higher royalties.
These two anti-competitive practices are also being closely monitored by the competition authorities.
Abusive acquisition of technologies
Competition and intellectual property law also overlap with technology transfer agreements which, most of the time, have ameliorative effects (diffusion, improvement, etc.). But these transfer agreements are fully subject to the competition law and even benefit from an exemption regulation by category. The agreement will then be considered anti-competitive if it has the effect of delaying the entry into the market of a generic drug.
In order to estimate whether a technology transfer agreement is anti-competitive, the Commission was able to ask the following questions in order to convict the Servier company: has the acquisition of technology delayed the entry of the generic Competitor into the market? Was the purchased technology qualified and was it a source of competition? And finally, did it effectively eliminate competition from the market?
The practice of excessive prices
Finally, the practice of excessive prices is also a way of hindering the competition of generics. For this purpose, in the Aspen Pharma case (October 14th, 2016), the Italian Competition Authority condemned the company Aspen Pharma to a fine of 5 million euros for having threatened the Italian Medicines Agency that they will stop delivering treatments against cancer if the latter does not increase the price of drugs.
The European Commission thus seized the case and opened an investigation“due to concerns over excessive tariff practices to which Aspen Pharma had been engaged in relation to five drugs against cancer.The Commission will examine whether this company abused a dominant position on the market, in contravention of the EU’s competition rules”.
The “pay for delay” case
The aim of the pay for delay agreements is to delay the entry of the generics into the market so that the company holding the expired patent still retains a little of its monopoly, in exchange, as its name implies, of financial compensation. The Court of the European Union had the opportunity to take a decision for the first time recently, thus confirming the previous analysis of the European Commission of June 19, 2013. In the present case, the Lundbeck company agreed on 6 agreements with 4 generics to delay the entry of the citalopram generic into the market. The Court thus noted that the agreements in question are akin to “market exclusion agreements, which are among the most serious restrictions on competition [§ 435]” and that the Commission has accordingly properly considered them as a restriction by object, thus confirming the ban on pay for delay agreements.
The recent jurisprudential advances in competition and intellectual property in the pharmaceutical sector therefore call for caution for companies. It is necessary to examine the good practices to be implemented in order to avoid falling under the condemnation of anti-competitive practices. This also goes through a good knowledge of the permitted or prohibited clauses in the various contracts entered into by the company with its competitors.
We can help you to develop strategies in accordance with the practice of the competition Authority, the jurisprudence and legislation in the field of competition law, while allowing your intellectual property rights to be valued at its best.
The French Lemaire Act was promulgated in France on October 7, 2016. It aims at liberating innovation and creating a framework of trust that guarantees the rights of users and protects their personal data. One of its objectives is to ensure a public service of data in France. This public service has already entered into force and is constantly improving. This notion of public service of data comes in the period where one speaks of data as the black gold of the 21st century. It will allow a legal framework to be established.
I. The availability of data
Now it is a public service like any other. It has a physical existence, a definition and is found on data.gouv.fr/en/reference.
This service comprises 4 dimensions namely:
– Data producers (administrations);
– Data broadcasters
– Data users (private and public persons/actors who will reuse the data); and
– The Etalab mission that drives the establishment of this public service.
Currently, 9 databases are included in the public service. They are now published and accessible to all and are the followings:
– BAN: National Address Base;
– Sirene Base of businesses and their establishments;
– COG: Official Geographical Code;
– PCI: Computerized Cadastral Plan;
– RPG: Graphical parcel registry;
– Repository of the administrative organization of the State;
– RGE: Large-Scale Repository;
– RNA: National Directory of Associations; and
– ROME: Operational Directory of Trades and Jobs.
Some have objected to the fact that this data was already available before the creation of this public service. On the other hand, the publication was sparse and unknown. Thanks to the creation of a public service dedicated to data, the French mission, Etalab, hopes to ensure the sustainability of this data, its economic security and the security of the investments of the data producers. In addition, this public service should guarantee stability and visibility of these databases.
As a lawyer one can only notice the absence of the legal data. This question was debated when the law was passed. It had been concluded that this data was not yet ready for publication, implying that it will be published one day and that a legal basis is not excluded.
II. The public service of data and intellectual property rights
Before, the law of July 17, 1978 on the freedom of access to administrative documents and the re-use of public information was the primary base for this public data which was based on two pillars:
– Access to administrative documents; and
– The use of the information contained therein.
Now, the French Lemaire Act adds the principle of re-use of this data which results from the access to this data. Without access to the data no reuse is possible. In contrast to access, use and re-use of the data, there are intellectual property rights. Indeed, who says openness of data means freedom. On the contrary, an intellectual property right implies exploitation monopoly and restricted access. It would appear that the public service of data and intellectual property rights are too different to be reconciled.
This opposition goes even further with the French Lemaire Act which imposes a publication of the data. Until now, the data was available at the request of the citizens. Now the logic is reversed since the administration is directly obliged to publish the data.
It is in this context that intellectual property rights arise. In fact, when the data was available on individual request, the risk of a violation of a right was less important. On the contrary, the risk of reproduction and representation is much more significant when the data is spontaneously published and accessible to all.
The law still provided a limit. Article 11 of the French Lemaire Act provides: “Subject to intellectual property rights held by third parties, administration rights […] cannot impede the re-use of the content of the databases that these administrations publish.” Thus, the re-use of the data found on the databases, which are under the control of the public service, is not absolute.
Considering intellectual property rights, the doctrine is unanimous meaning that only copyrights are likely to be heard in the reservation formulated, which therefore does not include trademarks or patents.
It is then a question of establishing which copyright owners can avail themselves of this reservation. In the event that the administration could object to re-use on the basis of its own intellectual property rights, the right of re-use would be obsolete and irrelevant. Logically, it appears from the study of case law that it is the rights of third parties to the administration.
In the same logic, the French law states that administrations cannot avail themselves of their database producer rights in order to impede the re-use of the data contained in these databases.
III. Conflict between the public service and the protection of personal data
When we talk about Open data, we refer to the opening of the data. There therefore exists a natural opposition between the open data and the protection of personal data. In order to reconcile the two, the French law for the digital economy makes a distinction between privacy and personal data.
– Privacy: the primary position of the legislator is to promote open data but always in the respect of privacy. As a matter of principle, a document affecting privacy cannot be communicable at all.
– Personal data: there is no principle of prohibition and communication. The legislator proceeds otherwise. He says that it is possible to publish documents that include personal data and lists them. A decree is expected to list all documents that may be published without the need for treatment before publication.
Today, there is a harmonization between the right to communicate a document to a person and the right to publish it. Once a document is communicable, it can be published.
In conclusion, the debate between the publication of data and the protection of personal data is still current in France. It is important to realize that there exist restrictions on the publication of personal data, but also on data infringing an intellectual property right. Endowed with a New Technologies department, Dreyfus & associés can assist you on intellectual property law issues, as well as personal and new Information and Communication Technologies.
Trademarks have been made fragile with the onset and subsequent rise of social media. The main risk is the damage to one’s name and brand reputation. The information spreads at such a speed the consequences are almost irreversible. A trademark owner should remain alert and vigilant on the internet and in particular on social media. With the rise of social media came usernames. A username is an identifier, unique to a social media platform, allowing users to access a page or an account. The danger is that username are based on a ‘first come, first serve’ scheme, meaning any person can register a username using an existing trademark if the owner has not done it yet. It is common to see username infringing on an IP right on social media. Currently, victims of username squatting are left without any specific tool to defend themselves.
The social media platform policy
One of the main difficulty is that usernames are subject to social media platform policy. Indeed, usernames belong to the social media platform that delivered it to the user. Social media platforms are in fact the username holders. Each platform deals with username squatting as it wishes. For example Twitter states in its policy that username squatting is prohibited. To the contrary, Facebook states in its policy that usernames are subject to the first-come, first-served principle. A harmonized, unified regulation at an international level would be welcome.
The Communications Decency Act in the US
Another issue is that social media platform are often based in the US. There, the Communications Decency Act, §230 states that providers of a computer-based interactive service cannot be held liable for the content posted by users of such services. Thanks to this ground, social media platform can choose to free a username that would infringe on an IP right, or refuse to do it.
However, if the sole purpose is to escape legal provisions protecting intellectual property rights, the disposition cannot be invoked. Indeed, if the social media platform has received notification of rights and the situation is patently unlawful, there is an obligation to act. Otherwise, the platform will be held liable.
Recent evolutions in the US
A decision dated January 18, 2017 created the possibility of relying on private property rights for usernames and domain names (Salonclick LLC v. Superego Management LLC et al, No. 1:2016cv02555). In this instance, the plaintiff claimed violation by his former employee of his private property rights. He was promoting his products on the internet and on Facebook. The plaintiff hired the defendant to assist him in promoting his products. However, further to a dispute between the parties, the defendant used her access codes to the social media platforms to promote her own company and redirect internet users to her own accounts.
The Court held a decision in favour of the plaintiff on the grounds of ‘conversion’ and ‘replevin’. The first one implies deprivation of property rights of an owner without his/her consent, or theft of private property. The second one is the right to bring a lawsuit for recovery of goods improperly taken by another. Further to this case, US case law might evolve in this direction.
In conclusion, we advise to monitor social media. Dreyfus uses a dedicated platform called Dreyfus IPweb. It allows us to offer our internet watch services to trademark holders and monitor their trademarks online. After a username has been detected as infringing an IP right, we analyse the use. If the products and/or services associated to the username are identical or similar to the ones of our clients, we can put an alert and define an appropriate strategy.
Despite a detailed reasoning resulting from a teleological reading of that regulation, we can question ourselves about the clarity and the merits of that decision.
What about the European Union trademarks? Inevitably, and despite a very clear European legislation on the subject, these national divergences have led to a lack of harmonization on the European Union territory and uncertainty regarding the enforceability or non-enforceability of the European Union trademark licences not registered in the concerned registry. It’s in seeking to clarify this point and to put an end to these questions that the ECJ has interpreted Article 23 § 1, first sentence, of Community Regulation (CE) n°207/2009 on third-party enforceability (CJEU, 4 February 2016, C-163/15, Youssef Hassan against Breiding Vertriebsgesellschaft mbH).
2/ A decision favorable to the licensor and the negligent licensee
In the present case, the Breiding company was granted a European Union trademark license, in particular authorizing it to act under infringement. The latter exercised this right against Mr. Youssef Hassan, reproaching him for marketing bedding articles in violation of his trademark right. The defendant, convicted at first instance in Germany, appealed against this decision based on the aforementioned article. He pointed out that there was no registration of the license granted in the trademark registry of the European Union and, therefore, argued that the licensee’s rights were unenforceable.
The Düsseldorf Court therefore stayed the proceedings and referred the following question to the ECJ for a preliminary ruling: can the licensee of a European Union trademark act as a counterfeit of the said trademark as soon as the license is not enrolled in the registry of European Union trademarks?
However, reading back the article point by point, the ECJ interprets this provision in the light of its context and the objectives pursued by the Regulation. Thus, it explains that the non-enforceability to third parties of legal acts (and in particular licenses) which have not been enrolled in the concerned registry, is intended to protect the person who has, or is likely to have, rights on a community trademark as an object of property and not the counterfeiting third party. In other words, the Court interprets here the article of the regulation by assigning it two different purposes according to the third-party and the situation concerned in the present case.
Consequently, the Court considers that the licensee of the European Union trademark may act on infringement even though that license has not been enrolled in the registry of trademarks.
3/ Observations
Certainly, this solution is consistent in the sight of the objective pursued by the regulation, which is, inter alia, to fight against counterfeiting. However, we cannot hold ourselves from regretting this distributive reading made by the CJEU, which is moving away from the letter of the article – yet very clear – and provides a somewhat flawed and unfounded interpretation.
In any event, this decision allows us to recall that the registration of the trademark license – whether national or European – remains useful and essential for the purposes of enforceability. Although the position of the Court is settled and that it was equally applied to the European Union’s designs and model (CJUE, 22 juin 2016, C-419/15, Thomas Philipps GmbH & Co. KG contre Grüne Welle Vertriebs GmbH), there is no guarantee that national courts will systematically follow that interpretation.
In conclusion, it is therefore advisable to remain cautious and to record with the trademark registry the relevant licensing contracts, otherwise there is a risk of being unenforceable to third parties. It is possible to enter only a confirmatory act of license in order not to reveal to third parties certain confidential elements of the license.
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Intellectual Property Code Article L.711-4 prohibits adoption of a sign that infringes on prior rights, especially business and trade names that are well known within the country if there is a likelihood of confusion in the mind of the public. By judgement dated July 8, 2016, Marseille’s Tribunal de Grande Instance extended the prohibition to trademarks and domain names that infringe, not only on such names but on their acronyms (TGI Marseille, 1e ch. Civ., 8 juillet 2016, n° 14/06485, Association ACFA c/ Société ACFA Multimédia inédit). This extension is justified by the presence of the French adverb translating roughly to “mainly” or “namely” in said article, emphasizing the non-exhaustive nature of the list that follows. Indeed, emphasis must be placed on the existence of a likelihood of confusion on the part of the public, a notion that merits examination on a case by case basis and per the facts of each case.
