Nathalie Dreyfus, founder of Dreyfus, took part in the ERA Academy of Law conference on “The Protection of Geographical Indications”. During the conference, Ms. Dreyfus provided participants with an overview of the legal challenges present in the area of domain names and geographical indications.
The hashtag, by its insertion before an expression or a word allowing contents to be classified by theme, has in a few years, become an essential tool for social networks, for private individuals as well as companies through their trademarks. The daily impact of this new communication tool in our connected society is undeniable. It is a direct channel of communication and offers a real proximity with the client.
It is interesting to observe that hashtags can be given the same definition as a trademark as per the Code of Intellectual Property as well as the European directive 2008/95/EC and must therefore be protected in the same way, provided however that registration is sought and that the established requirements are met. In France, Article L.711-1 of the Code of Intellectual Property states that: “The following may constitute [such] sign: a) All kinds of designations such as: words, word groupings, last names and geographical names, pen names, letters, numbers, abbreviations (…)”. A hashtag could therefore be protected under trademark law if it meets the same requirements applicable for trademarks, namely distinctiveness, availability and lawfulness.
Formal registration definitely allows a hashtag to be protected against any unlawful reproduction or imitation. However, it appears somewhat incongruous that the holder of a trademark on a hashtag prohibits its use by web users, as the hashtag’s relevance lies in its sharing and propagation. Only its use by a competitor in his business activities would be likely to be suppressed and deemed to be an infringement.
There are some companies, mostly in the United Sates, that have managed to register trademarks containing the famous symbol ‘#’. For example, the operator T-Mobile USA has filed the trademark ‘#7NIGHTSTAND CHALLENGE’ (n°4671787) with the USPTO, United States Patent and Trademark Office. In France, the trademark ‘#CLIENT ADDICT’ has for instance been filed by Futur Telecom under n°4096205 in classes 9, 35, 38 and 42.
However, recently the California Central District Court, in its decision in the case Eksuzian. v. Albanese, dated 7 August 20151 took the position that hashtags could not be registered as trademarks due to their descriptive nature: ‘« hashtags are merely descriptive devices, not trademarks (…)’. However, according to USPTO, commercial trademarks are words, names, or symbols used to distinguish one product from another. They must have a distinctive characteristic. There are generally 4 levels of specificities from “arbitrary and fanciful” to “generic”. For the more arbitrary and fanciful ones, the USPTO2 allows the registration of a hashtag as trademark. On the other hand, generic trademarks do not benefit from this protection. The stand of the USPTO is more logical than that of the court: the purpose of trademark law is to protect and promote the distinctive characteristic, and to prevent other bodies from taking advantage of such distinctive characteristic. A hashtag potentially promotes the name, the reputation or even the product of companies.
As such, be in in France, at community or even international level, it would seem undeniable and logical that in the future and despite this decision of the California District Court, a distinctive hashtag would continue to be registered as trademark. It will be interesting to see how the situation pans out…
1 California Central District Court, Eksuzian. v. Albanese, 7 August 2015.
2 United States Patent and Trademark Office.
The URL (Uniform Resource Locator) is a universal naming format which allows the identification of a resource on the Internet. When a trademark is reproduced in a social network’s URL, Internet users might think that the page is created by and for the trademark. This is however not always the case. This risk of confusion is highly prejudicial for the trademark. The Tribunal de Grande Instance of Paris, in a decision dated 29 January 2016, deemed that there was infringement of a trademark where a private sales website included the trademark in its URL in a transaction not authorised by the holder of the trademark.
In this particular case, the private sales website, specializing in decoration, “Westwing.fr”, was offering for sale carpets of the trademark “Un amour de tapis”, in accordance with an agreement with the company bearing the same name. However, another limited sale event had been organized, without the brand’s authorisation, at the address “westwing.fr/un-amour-de-tapis-choisissez-votre-classique” and the search engine Bing showed a commercial advertisement for this transaction.
The company then entered an action in court for trademark infringement as the trademark had been identically reproduced in the URL address, as well as for unfair competition and freeriding for having created a risk of confusion in the mind of the public and drawing profits from the investments and popularity of the trademark.
It won the case for infringement in the URL in accordance with Article L713-2 of the Code of Intellectual Property which prohibits the reproduction of a trademark, without modification or addition, for products or services that are identical to those stated in the registration. Indeed, the Court observed that the relevant URL address contained the verbal trademark, “the dashes in between each word only being insignificant differences”. This address made it possible to access the page on which the online sale took place and which itself mentioned the trademark, the latter being furthermore reproduced under each of the 74 carpets on sale.
Furthermore, the inclusion of the trademark right from the results page of the search engine Bing offering products that are identical or similar to those offered by the relevant trademark, or the inclusion of the sign in the link in order to redirect Internet users to the private sales website, thus creating confusion in the minds of the public who could assume that all the products offered for sale on the website have similar origins, are all characteristics of an infringement of a verbal trademark.
While the Court deemed that reference to the trademark in the commercial advertisement generated by a search engine and in the hypertext link to the website constituted an infringement, it did not however take into account the meta-tags of the website. According to the judges, the use of the trademark as reproduced in the source code of the website, “cannot be considered as an infringement of the trademark, insofar as the sign is not used in the source code to designate products and services and is furthermore not accessible to Internet users who used the search engine by typing in the relevant trademark.”
Setting out the evidence of an infringement on the Internet is not trivial, particularly regarding a lawsuit and despite the rule of evidence, a specific modus operandi established in that respect needs to be adhered to. As a matter of fact, in this respect, in 2010, a judgment of the Court of Appeal of Paris1 (Cour d’Appel de Paris) points out that a mere screenshot by the plaintiff has no probative value and is not sufficient to prove the infringement.
Archive.org, a website administered by Internet Archive, a non-profit organisation, prides itself for having saved 450 billion of web pages with its wayback engine. Its system provides a snapshot of the content of a webpage with great reliability. Even though the contents of a URL address may have changed, the system of archive.org avoids this risk of modification over time and makes it possible to access a web page as it appeared in the past, up to several years before.
At national level, judges have for long been reluctant to recognise such evidence. France, United States, and also Germany have seen their respective courts refusing such means of evidence because of the absence of legal authority of the issuing body of the archives as well as the lack of reliability of the dates obtained. Contrarily, supranational legal bodies (the WIPO Arbitration Center, European Patent Office) have often been more flexible in this regard.
Firstly, the Court of Appeal of Paris (Cour d’Appel de Paris), on 2 July 2010, did not recognise any probative value to the internet finding of the case in question, effected by means of archive.org, on the basis that “the finding has been effected from an archive website exploited by a third party to the procedure, who is a private person without legal authority, which operating conditions are unknown”, before adding that “this search engine has not been created for legal use” and that “the absence of any interference on the way to giving access to the pages under investigation was therefore not guaranteed”. In truth, this decision is case specific since, in this case, the bailiff, here the third party, had wrongly identified the date on which the archiving had been carried out, and the parties then had to use the URL address of the website on which the said date appeared.
Thereafter, some judgments have wrongly considered this specific case as a rule, the case law then considering the findings effected through the “archive.org” website as being deprived of probative value.
However, the case law of the European Patent Office in this matter has undergone a recent change. On 21 May 2014, the EPO’s Boards of appeal (T 0286/10) gave a ruling2 relating to taking into account the archives of the wayback engine in the case of an opposition to a patent. The Boards of appeal found no reason to consider the dates submitted by the Internet archives as being inaccurate, the burden of which lies on the defendant to prove “the new elements capable of discarding the suspicion and bringing contrary evidence destroying the presumption”. Furthermore, they specify that although the archives database is incomplete, it, with regards to its popularity and reputation, “demonstrates sufficient security to benefit from a presumption of a reliable and trustworthy source of information”, the burden of evidence to the contrary being on the adverse party.
This decision of the EPO therefore goes more in the upstream with regards to the acceptation of evidence submitted by a system of archives and in the legitimacy granted to the “archive.org” website. Similarly, the World Intellectual Property Office (WIPO) Arbitration and Mediation Center recognises the validity of evidence issued from the “archive.org” website.
However, the road towards the evolution of national considerations, and in particular French ones, seems long as long as the issuing body of screenshots is considered as illegitimate by the national judges.
Nevertheless, an evolution can be observed in French cases. Firstly, in a judgment of 19 March 2014, the Court of Appeal of Paris (Cour d’appel de Paris), based its decision on the comparison of websites provided by the “archive.org” website.
Furthermore, the Court of Appeal of Lyon (Cour d’appel de Lyon), on 28 May 2014, dated the beginning of the use of a domain name by taking into account screenshots from the “archive.org” website.
Finally, the TGI (Tribunal de Grande Instance) of Paris, admitted on 21 October 2015, the probative value of the “archive.org” website.
However, a bailiff’s findings seems necessary in order to point out useful pages. Indeed, case law considers that a mere screenshot is not enough as form of evidence in the absence of a bailiff’s findings. It will therefore be necessary to hire a bailiff with the relevant territorial jurisdiction and specialised in matters of “Internet findings”, in order to set out the findings in accordance with the Rule of Law. The probative value of the bailiff’s findings will depend on the compliance with a specific modus operandi, as well as the presence of specific technical statements, set out in case law and the Afnor NF Z67-147 norm, which, however, only amount to good practice guidelines3. It will concern, in particular, the description of the equipment used in order to reach the findings, the absence of proxy use and the deletion of cache memory. In the absence of such statements there will be a doubt as to the concordance between the page shown and the online one with regards to the findings. For them to be indisputable, the bailiff should also mention his IP address. It should also be noted that the evidence put forward with regards to the findings should have been obtained in good faith4.
These recent decisions therefore grant a certain probative value to the screenshots of the website “archive.org”. France therefore follows the decisions of the European and international bodies on this matter.
1 CA of Paris 2-7-2010 RG n°2009/12757
2 OEB, decision of the Technical Board of Appeal on 21 May 2014, Pointsec Mobile Technologies AB / Bouygues Telecom.
3 Court of Appeal of Paris, 27 February 2013
4 Court of Appeal of Paris, 7 October 2015: validity of screenshots if probative extrinsic elements supporting submitted elements, such as a bailiff’s findings, are provided. However, “the evidence put forward with regards to a bailiff’s findings should have been obtained in good faith”.
Rwanda’s intellectual property legislation has been undergoing a wave of reform and modernization for a couple of years now. Indeed, a number of changes have been made in the area of Rwandan intellectual property. A new law, Law No. 005 of 2016, and several ministerial orders have introduced a number of amendments to existing legislation. More specifically, a Ministerial Order on the 17th of March 2016 is reshaping some aspects of the landscape of industrial property.
A reorganization of the opposition procedure to trademarks and geographical indication registrations
Article 3 of the Ministerial Order of March 17th, 2016 amends the length of the opposition period allowing a challenge to an application request for registration of a trademark or geographical indication. The new law means the holder of an intellectual property right can file an opposition within 60 days after the publication of the application request, as opposed to 30 days, previously.
Although the 60-day period was made official by Article 3 of the order, the Rwandan registry has already been allowing for the 60-day opposition period for 19 months.
The same Article 3 of the Ministerial Order grants a 14-day response period to the trademark registration applicant.
Meanwhile, Article 4 expressly sets out the information that an opposition to a trademark or geographical indication registration must contain: the identity of the holder of the registration request of the sign, the nature of the opposition, detailed reasons for the opposition, physical evidence of the grounds for the opposition, powers of attorney (if necessary) and the date and signature of the opposing party.
The decrease of several taxes
A large number of changes in tax rates has also taken place in Rwanda.. In particular, the following official taxes relating to trademarks have been reduced:
– Trademark filing;
– Change of name recordal;
– Change of address recordal;
– Merger recordal;
– Renewals
The Ministerial Order of March 17th, 2016 has,, within the trademark registration system, also introduced taxes linked to the classes of the Nice classification.
Rwandan law has also been reformed to allow for the protection of different plant varieties. Rwanda joined the Madrid Protocol on August 17th, 2013, finally allowing trademark holders to designate Rwanda in an application for international protection.
It will be interesting to see how these reforms are received by trademark holders in Rwanda but also to see potential further modernization of Rwandan intellectual property legislation given a wider international context.
Thailand has recently undergone a significant and welcome change in the landscape of intellectual property. Indeed, the government has decided to bring into force an amendment on trademarks, “Act B. E. 2559,” effective as of July 28th, 2016. The Act will reform current procedures through a series of legal amendments.
The amendments represent Thailand’s first step towards international standardisation of its protection of intellectual property rights. Whilst the current challenge is to construct a legal infrastructure Thailand would then be able to gradually build up towards accession to the Madrid Protocol. However, even if the amendment introduces a number of developments into Thailand’s intellectual property legislation, more decrees will have to be adopted in order to complete this core structure.
A reform of the trademark registration process
A first step in bringing the legislation closer in line with the Madrid Protocol was done through the drafting of a law, in force since July 28th, 2016 allowing for multi-class trademark registration. Until then, one could only register trademarks in one class/category. The reform mainly simplifies the process of issuing trademarks, allowing for the protection of products and services of different categories under the same trademark.
Before the trademark reform, a prior application would result in the automatic cancellation of other applicants’ rights to register a similar or identical trademark even if the application was still under review and its registration still in progress. As of July 28th, 2016, subsequent applications will simply be suspended during the review period of the first application. Furthermore, trademark holders are no longer allowed to apply for the association of several similar trademarks.
Strengthened trademark protection
On one hand, the amendment of the law on Thailand’s trademarks will bring changes to the current timeframes. The response time to an objection or an opposition made to Thailand’s Trademarks Office has now been reduced from 90 to 60 days.
On the other hand, the time limit to pay the registration fee is extended from 30 to 60 days after the registration notice date. It is also possible to request for an extension of the deadline.
A grace period of 6 months after the expiry date has also been added. During that time, trademark holders will be authorized to renew their trademark applications in exchange for the payment of a higher rate .
One of the amendments that has gotten a lot of media coverage is the possibility of registering sound marks via the Thailand Trademark Office. This protection has been in force in other countries for some time. In France for instance, audible signs can give rise to a valid trademark pursuant to the law of 4 January 1991, if the signs are represented by musical scores or sonograms.
Thailand has now decided to admit that goods and services can be distinguished by audible signs. Such sound marks are a natural complement to the category of protected trademarks. However, in Europe, a judgement of the Court of Justice of the European Union dated November 27, 2003 (CJEU November 27, 2003, n°C-283/01) has further highlighted the protection of sound marks. The European judges ruled that only a transcription constituting a musical score complies with the requirements so that the “graphic representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.” Therefore, we will have to wait for developments in Thailand’s caselaw to effectively define the framework for this new addition to the field of distinctive marks.
Kenyan trademark law has recently undergone reform. The enactment of the Companies Act 2015 and Companies (General) Regulations 2015 has resulted in a change in practice for the Kenyan Industrial property Institute.
The Institute now has the obligation to examine the occurrence of pre-existing trademarks when it assesses the name of a company. Indeed, the name of a company should be refused if it is considered as offensive or undesirable: the name of a company will be considered as such if it includes a trademark which has already been registered.
However, it is possible to bypass this requirement by seeking the consent of the holder of the pre-existing trademark and requesting to be able to register the company name, despite the pre-existing registered trademark.
Finally, the Office’s obligation in terms of the company name does not apply the other way round: the Kenyan Industrial Property Institute need not examine pre-existing company names when evaluating applications for trademarks.
On February 29, 2016, the National Assembly of the Republic of Korea adopted a bill which significantly amended the Korean Trademark Act. The revised Act will come into effect on September 1st, 2016.
The reform is the result of several proposals made by the Korean Intellectual Property Office to amend legislation relating to trademarks. The new law also incorporates all and any amendments made since 1990.
The main objective is to shorten the trademark registration process and to facilitate trademark filing applications. Where a court decides on the cancellation of a trademark registration based on non-use, the decision may be taken into consideration when an application for the registration of a new trademark (which is identical or similar to the cancelled trademark) is under examination. It will then not be necessary to file a new registration application for the same trademark. Furthermore, an applicant can now file arguments against a notification of rejection of trademark registration application from the Office, beyond the original set time limit and may also ask that the procedure be continued.
Definition of a “trademark” under the revised provisions
Firstly, the definition of a “trademark” has been simplified. Article 2(1)(i) defines a trademark as “either of the following that is used on goods related to the business of a person who conducts business activities, such as producing, processing, certifying or selling such goods, to distinguish them from the goods of others; a) a sign, a character, a figure, a three-dimensional shape or any combination of these; or b) other visually-recognisable constructs.”
Henceforth, a registered trademark is “a trademark used to identify and distinguish between the goods of one person and those of another”, irrespective of the type of trademark.
More admissibility for cancellation cases based on non-use: removal of the legal standing requirement
A Korean trademark may be cancelled if it has not been in use for three consecutive years prior to the cancellation application.
Article 73(6) of the existing Act, allowed an “interested party” to apply for cancellation of a mark based on non-use, during the three consecutive years prior to the cancellation application, either by the trademark owner or holder of an exclusive or non-exclusive license on the trademark. Article 119(5) of the revised Act removes the requirement of legal standing and therefore, any person may request cancellation of a non-used registered mark without having to justify the locus standi.
Previously, pursuant to Article 73(7), where a cancellation trial decision became final, the trademark right would be extinguished on the date that the decision was finalised. This date is now amended by Article 119(6) which makes a final non-use cancellation decision retroactive as of the filing date of the cancellation trial.
The reform aims to relieve the workload of the courts, that of trademark registrars and also accelerate current procedures. Indeed, for the year 2014, the Korean Intellectual Property Office reports 150,266 trademark applications and 3,823 trademark trial applications including 1,449 cancellation applications. Out of these cancellation applications, 1,396 rulings were issued.
The reform will also allow courts to focus primarily on the issue of cancellation without addressing the locus standi of the applicant.
In addition, it should be noted that Article 8 removes the mandatory six-month term imposed on the applicant when filing a cancellation claim for non-use. Filing a trademark application 6 months prior to the cancellation action is no longer required; the only subsisting criterion is that the application for registration should be made before filing the cancellation application.
Change in the examination procedure of a trademark in cases of identical or similar registered trademarks
A trademark similar or identical to a prior registered trademark cannot be registered under Korean law.
According to Article 7(1)(vii), an examiner will need to assess whether such identical or similar trademark existed on the date of the trademark registration application. Yet, if the registered trademark were to be invalidated, cancelled, abandoned or assigned after filing the application, it would not affect the registration of the new trademark: the examiner would go on to reject such a registration because it was identical or similar to the registered trademark at the time of filing the trademark application. Regardless of what happens after the filing, the petitioner would still benefit from the outcome.
It is for this reason that Article 34(2) of the revised Act changes the examination of identical or similar trademarks with the new trademark to the examination date of a registred trademark. If appropriate, any decision revoking, invalidating, abandoning or assigning a trademark will be taken into account during that examination and the examiner will thus be able to accept the registration of this new trademark.
The revised Act has also repealed Article 7(1)(viii) which required a person to wait for one year following a trial decision cancelling the trademark registration, before applying to register a trademark identical or similar to the extinguished one.
The Article sought to avoid confusion between two trademarks in the customers’ minds. However, it did not prevent confusion in cases where the registered trademark was assigned to two different persons through a license (this is made possible by Article 54). The Article was therefore removed in order to shorten the application procedure for registering a trademark.
The reform initially expected in 2015 by professionals active in the field of trademark law and by the Korean Intellectual Property Office, seems to have achieved its objectives. Despite this one-year delay, the reform is consistent with the proposals made by the Office in 2012 and contributes to enhance and balance trademark law in Korea, for trademark applicants.
The Sultanate of Oman, a Middle Eastern country situated in the south of the Arabian Peninsula, has undergone several major changes in its intellectual property law through the decision no. 124/2016 of the Ministry of Trade and Industry.
A major reform for trademark holders
This act is mainly designed to regulate the registration of trade names and to extend trademark protection for the benefit of holders of intellectual property rights. Prior to this reform, trade names were not published as trademarks and could not, therefore, be subject to an opposition. The new act now allows all trademark holders to apply for the cancellation of any trade name, if the latter is similar to a national or international trademark already registered and protected in Oman.
Dr. Ali bin Masoud al Sunaidy, Minister of Commerce and Industry, also recalled a fundamental principle in the field of Omani intellectual property law. Indeed, registered trade names must be composed of Arabic words, except if they are names of international companies registered in the Sultanate.
In addition, a trade name with political, religious or military connotations, or containing the word “Oman” will also be refused.
A regional opening
This change is in line with recent legislative developments carried out in the Middle East. The United Arab Emirates for instance have adopted, in early 2015, a similar reform to reduce conflicts between trade names and trademarks.
The use of a trademark as a hashtag on social networks sometimes causes problems for companies who feel that their intellectual property rights have been infringed.
Opposition to an unrestricted and free use of the hashtag, in this case #Rio2016, also originated from several Olympic Committees in the context of the 2016 Summer Olympic Games in Rio.
The firm position of the Olympic Committees
During the Summer Olympic Games of 2016, the hashtag “#Rio2016” was obviously widespread across the Internet and on various social networks. Many Internet users and companies have frequently used the hashtag to support and encourage their national team.
However, not everyone was enthusiastic about this practice. In fact, several Olympic Committees, including Germany and the US, banned the use of the hashtag by non-Olympic sponsor companies. The Committees considered that the companies were not entitled to use the hashtag since, according to the Committees, such use is an act of counterfeit which infringes their intellectual property rights.
In the United States, the Committee served notice to a women’s ready-to-wear company, Oiselle, to remove a picture posted on Instagram of a track and field athlete of the national team who is also the brand ambassador, and under which the caption included the hashtag #RoadtoRio. The founder of the trademark, Sally Bergeson, has also reacted to the controversy by posting on her blog an article about the rule that is causing this prohibition, “Rule 40“. The rule, enshrined in the Olympic Charter states that “except as permitted by the IOC Executive Board, no competitor, team official or other team personnel who participates in the Olympic Games may allow his person, name, picture or sports performances to be used for advertising purposes during the Olympic Games.”
However, the decision was not unanimously nor positively welcomed. Some companies in the United States defended themselves by suing the Committee and condemned a ridiculous and far too strict restriction policy.
Abusive bans
In Europe these prohibitions also seem absurd. In reference to the judgment of the Court of Justice of the European Union on September 22, 2011 involving Interflora and Marks & Spencer, the use of a trademark as a Google AdWord can be an act of counterfeit if that use has adverse effects on the functions of the trademark, that is, on the specific image which the company wants to create in the mind of the consumer. One can draw a parallel between Google AdWords and hashtags and consider that only a hashtag which adversely affects the functions of the trademark can be prohibited.
Yet, if the company simply wishes to support its country in the context of the competition and if no business link is established between the Olympic Games and company (i.e. if the hashtag is not used in relation to the goods and services of the company), then it is entitled to use this hashtag.
The hashtag #Rio2016 therefore cannot be protected in the same manner as the Olympic rings symbol for example, because it is not a trademark or a design within in the strict legal sense of the term. Thus, its use should not be as limited as some Olympic Committees are arguing.
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